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Newsletters

Patent Amendments ©(Part II of II)
Spring, 2013

Program of Examination Procedures for TW-Supporting Use of PPH Agreement (TW-SUPA)

Amended and enacted on January 1, 2013

1. Introduction
The Taiwan Intellectual Property Office (TIPO) initiated the Patent Prosecution Highway (PPH) program with the United States Patent and Trademark Office (USPTO) on September 1, 2011 and also with the Japan Patent Office (JPO) on May 1, 2012.
The PPH program is designed to speed up the examination of new applications as follows: The applicants whose claims are determined to be allowable after a substantive examination by the Office of First Filing (OFF) can submit the documents related thereto to the Office of Second Filing (OSF) where the corresponding application is filed, so that the OSF can utilize the search and examination results of OFF. However, because there has historically been a long examination pendency period for the application at TIPO, TIPO initiated the Program of Examination Procedures for TW-Supporting Use of PPH Agreement (TW-SUPA) on March 1, 2012, to gain the benefits of sharing the examination results with foreign patent offices, and to encourage the applicant to take advantage of the examination results to petition for the PPH examination in foreign patent offices participating in the PPH program.
According to the TW-SUPA program, if the applicant files an application at the TIPO OFF, and then files a corresponding application at a foreign patent office implementing the PPH program bilaterally with TIPO, the applicant can petition to apply for the TW-SUPA program, so as to speed up the application at the TIPO. The TW-SUPA program would help the applicant to obtain the corresponding foreign patent by utilizing PPH since TIPO would first provide the search and examination results to contribute to sharing the examination results with the foreign patent offices.
In order to perfect the TW-SUPA program, the relevant contents have been amended, and the trial period of this program has been extended for the year following September 1, 2012. Prior to the end of the extension, TIPO will determine whether to continue or revise the TW-SUPA program based on the outcome of the implementation thereof. TIPO may also change or terminate the TW-SUPA program if there is the excessive examination loading or any other undesirable unforeseen consequences.
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2(A). The application to be filed at TIPO to utilize the TW-SUPA program should satisfy the following requirements:
2(A).1 The application shall be a priority application for a corresponding application at a foreign patent office which has a PPH agreement with TIPO.
2(A).2 The petition for the TW-SUPA program should be submitted within six months following the filing date of the corresponding foreign application.
2(A).3 After a Notification indicating that the application at TIPO would be assigned to be examined by the Examiner has been issued, the Examiner has not issued any Examination Notification indicating that the application fails to meet a stipulation of the Patent Law.
2(A).4 If the applicant petitions for the TW-SUPA program for an application which has not yet been published, the applicant should also petition for early publication for this application based on Article 37 Paragraph 2 of the Patent Law.
2(B). In the PPH program implemented by TIPO in cooperation with USPTO, an eligible corresponding foreign application is referred to as a US utility patent application, but not as a US provisional application, a US plant application, a US design application, a US reissue application, a US application entering reexamination proceeding or a US application placed under a secrecy order. By contrast, in the PPH program implemented by TIPO in cooperation with JPO, an eligible corresponding foreign application is referred to as a JP invention patent application, but not a JP utility application or a JP design application.
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3. Requirements under the TW-SUPA program:
3.1 A petition including the application number of TW application to be examined, the application number and the filing date of the corresponding foreign application, and the name of the country accepting the corresponding foreign application;
3.2 Certified application documents for the corresponding foreign application, i.e. the documents sufficient to prove that the corresponding foreign application has been filed, given a filing date and an application number, and claimed the priority of the TW invention application (for example, the filing receipt issued by USPTO, the petition for filing a JP invention application at JPO, or the filing receipt issued by JPO);
3.3 Copies of at least two prior art references which the applicant thinks to be closest to the present invention (please also provide the reasons why the present claims have patentability when compared with the prior art references; in principle, the applicant needs not submit the prior art references belonging to the patent literature and available to TIPO, but needs to submit the prior art references which belong to the non-patent literature; and in principle, the applicant needs not submit the Chinese translation of the prior art references unless the Examiner at TIPO requests otherwise); and
3.4 The official fee of NT$ 4,000 for each application.
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4. Complementary measures:
4.1 In order to balance the needs of the applicant and the present resources allocated for the subsequent examination at TIPO, the maximum number of applications which TIPO could deal with each month according to the respective technical field of the applications is as follows:
(1) The number of mechanical-type applications (mainly in section B or F in IPC) and the number of human necessity-type applications (mainly in section A, D or E in IPC) which could be dealt with each month are no more than eight in principle.
(2) The number of semiconductor-type applications (mainly in subclass H01L or H01S in IPC), the number of information-type applications (mainly in section A, D or E in IPC), the number of communication-type applications (in class H03 or H04 or subclass G11C in IPC), the number of electrical power measurement and optical and storage device-type applications (mainly in section G or class H02 in IPC), the number of biotechnological and pharmaceutical-type applications (mainly in class C07 or C12 in IPC), chemical engineering-type applications (mainly belonging to the chemistry category in section C in IPC), and optoelectronical and crystal liquid-type applications (mainly in subclass G02F or G09G in IPC) which could be dealt with each month are no more than four in principle.
4.2 The maximum number of applications of each participating applicant under the TW-SUPA program is as follows:
In order to not only to give each applicant an equal opportunity to utilize the TW-SUPA program, but also to prevent the condition where the applicant petitions for the TW-SUPA program for all eligible invention applications instead of those screened out after appropriate consideration, there is a limitation that the maximum number of applications for which each applicant1 petitions under the TW-SUPA program is eight.
4.3 In order that the applicant could make progress in petitioning for the TW-SUPA program, in examining the application under this program, on the website of TIPO, the relevant information (such as the number of the petitions for the TW-SUPA program in each technical field, the number of applications under the TW-SUPA program and the projected date on which the Examination Notification of the last application under the TW-SUPA program in each technical field might be issued) would be updated regularly2.
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5. Procedural requirements:
The applicant should fill in the petition, submit related documents according to, and pay the official fee of NT$4,000 for the TW-SUPA program. For each application, the applicant, when submitting a petition for the TW-SUPA program for an application which has not been published, shall also petition for early publication for that application with the payment of the official fee of NT$1,000, so that the total official fees for both petitions would be NT$5,000.
After the necessary documents have been submitted for petitioning the TW-SUPA program for the application to meet the requirements of this program, TIPO would notify the applicant of the fact that the application has entered the examination phase of this program, and also of the date (projected by TIPO) on which the Examination Notification might be issued (see Annex regarding how to calculate the date).
The applicant has the option to withdraw the petition for the TW-SUPA program within one month following the receipt of the notification of the projected date. If this option is exercised, TIPO would return the official fee of NT$4,000 for this program.
If the application does not meet the requirements of the TW-SUPA program or the necessary documents are incomplete, TIPO would request that the applicant rectify the incompliance. Following this request, if the application continues to be incompliant with the requirements of the TW-SUPA program, the application would proceed to the normal examination procedure.

1. If two or more applicants co-file an application with the intention of using the TW-SUPA program, the maximum number for each applicant would be separately calculated where the limitation to the maximum number for at least one of the applicants shall not be exceeded.
2. Twice monthly in principle (such frequency may be adjusted according to the real conditions).

Annex: How the projected date when the Examination Notification would be issued is calculated:
In principle, the projected date for TIPO to issue the Examination Notification for the application under the TW-SUPA program is six months after the necessary documents therefor are submitted.
If there are more applications than the maximum number which could be dealt with under the TW-SUPA program in a technical field in a specific month, the examination for the exceeding application would be deferred to the next month based on the numerical order of receipt. Accordingly, the projected date on which the Examination Notification might be issued for an application would be six months after the necessary documents are submitted by the applicant plus the month(s) of delay resulting from a deferral.
The waiting month(s) resulting from the deferral would be derived from the ordinal number divided by the above-mentioned maximum number, rounded up, with 1 subtracted thereafter.
Example 1, in cases of no delay: If an applicant petitions for the TW-SUPA program for a specific machine-type patent application on May, 25, 2013 under the condition where there were no deferred machine-type applications in the previous month and where the petition for the TW-SUPA program for the specific application is the eighth one in May, the date, as projected by TIPO, on which the Examination Notification would be issued for the specific application would be November 25, 2013 (since the specific application would be arranged into the examination schedule of May, so that the projected date for the Examination Notification would be (May + 6 months) 25, 2013 = November 25, 2013).
Example 2, in cases of delay: If the applicant petitions for the TW-SUPA program for a specific information-type patent application on May, 25, 2013 under the condition where there were 6 deferred information-type applications in the previous month and where the petition for the TW-SUPA program for the specific application is the eighth one in May, the date, as projected by TIPO, on which the Examination Notification would be issued for the specific application would be February 25, 2014 (the months of delays = (6 + 8)/4 = 3.5 4 and 4-1 = 3; and that specific application would be arranged into the examination schedule of July, and thus the projected date for the Examination Notification would be (May + 6 months + 3 months) 25, 2013 = February 25, 2014).


Reported by Wei-Ting Chou
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