The Taiwan Intellectual Property Office (TIPO) of the Ministry of Economic Affairs (MOEA) examines numerous intellectual property rights (IPR) applications every year, and has not only maintained high examination quality but also endeavored to improve examination efficiency. In order to continue to improve its examination services, the TIPO held the "Consultation Meeting for Optimizing and Refining Patent and Trademark Examination Systems" in June 2024, during which the TIPO put forward a number of proposals and discussed them with the consultation committee members. One of the proposals was the "Accelerated Examination Program for Re-examination of Invention Patent Applications" (hereinafter referred to as the "Program"), which is introduced in this article.

 

In Taiwan, invention patent applications are subject to substantive examination, after which a decision may be issued that grants or rejects the invention patent application. If the applicant is not satisfied with the rejection decision, he/she may apply for re-examination. To fulfill the purpose of re-examination, Article 50 of the Patent Act stipulates: “The competent patent authority shall assign the re-examination to a patent examiner who has not examined the original application, and shall issue a written decision to the applicant." Under current practices, in addition to the requirement that the re-examiner must not have examined the original application, the TIPO often assigns more senior and experienced examiners to conduct re-examinations to better protect the rights and interests of the applicant. However, since experienced examiners are often required to handle more complicated cases such as post-grant amendments and cancellation actions, it is worthwhile to explore methods for more effectively utilizing available examination resources and enhancing the efficiency of re-examination.

 

Under current practices, after receiving a rejection decision, the applicant for an invention patent application may request re-examination within a certain time limit. After receiving all necessary documents, the TIPO will issue a letter to the applicant confirming that the re-examination is about to commence. To continuously improve the efficiency of re-examination, the Program sets forth explicit conditions suitable for accelerated re-examination and allows the applicant to file such request within an appropriate period of time. If the TIPO determines that the acceleration request meets the conditions specified in the Program, it will proceed to accelerate the re-examination.

 

Specifically, the substantive requirements for a re-examination case to which this Program is applicable are: that only some of the claims are rejected in the rejection decision of the substantive examination, and that the amendment accompanying the re-examination request meets one of the following two requirements: (1) deletion of the claims that involve grounds for rejection, or (2) simply rewriting the dependent claims that do not involve grounds for rejection in the rejection decision of the substantive examination into independent form. In addition, the amendment may include renumbering of the claims, adjusting claim dependencies, and adding new dependent claims.

 

The procedural requirements include the time period for filing and the required documents. The time period for filing starts when the applicant receives the "Notice Confirming the Commencement of Re-examination" from the TIPO, and ends when the applicant receives the first re-examination office action. The required documents include an application form for this Program, which should include the application number of the invention patent application and a statement indicating which of the prescribed requirements the current amendment meets. According to the current plan, the applicant is not required to pay an official fee when filing an application under this Program.

 

The advantages of this Program are that the application procedure is simple and that the applicant is not required to pay an official fee. According to the current plan, if the acceleration application meets the prescribed requirements, the TIPO will issue a first re-examination office action or a decision within 6 months, which is shorter than the average time for issuing a first re-examination office action of an invention patent application in 2023, which was 10.1 months. For cases that do not meet the prescribed requirements, the TIPO will handle them through regular examination procedures.

 

The TIPO finalizing the details of the Program, which is expected to be implemented in September 2024. The Program is advantageous to applicants of invention patent applications and therefore worth considering.