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The Patent Prosecution Highway (PPH) pilot plan between the Intellectual Property Office in Taiwan (TIPO) and the US Patent and Trademark Office (USPTO) was started from 1 September 2011 for a trial period of one year. The pilot plan will last for one year and, upon the expiry of the one-year term, both the TIPO and the USPTO will evaluate and decide whether the pilot plan will be continued. Either office may decide to terminate the PPH pilot program prior to the one-year term if the volume of participation exceeds a manageable level or for other reason(s). This PPH pilot program enables an applicant, whose claims have been determined to be allowable/patentable in the Office of First Filing (OFF), USPTO, to undergo an accelerated examination under the PPH in the Office of Second Filing (OSF), TIPO, with a simple procedure according to a request from an applicant. In Taiwan, the PPH pilot program applies to invention patent applications only, but not utility model and design patent applications.
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When applying PPH pilot program, it will enable an applicant, whose patent claim(s), in part or s a whole, had (have) been determined to be allowable/patentable in the Office of First Filing (OFF) through substantive examination, to undergo an accelerated examination under the PPH in the Office of Second Filing (OSF) through submitting to OSF the OFF's searching and examination results, with a simple procedure according to a request from an applicant.
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According to the PPH pilot program between TIPO and USPTO, for an invention patent application filed with the TIPO, if a part of or the entire claim(s) of the corresponding US application has(have) been determined to be allowable/patentable before the OFF-USPTO, the applicant may apply for accelerated examination under the PPH of his/her patent application filed with the OSF-TIPO. Implementation details of the PPH pilot plan between the TIPO and USPTO are as follows:
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Request with TIPO for Accelerated Examination under PPH Pilot Program
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An applicant should file a request for accelerated examination under the PPH with TIPO by submitting a completed "Request for Acceleration Examination under TIPO-USPTO PPH Pilot Program" request form accompanied by the relevant supporting documents.
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Requirements for Requesting Accelerated Examination under PPH Pilot Program
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1. |
Qualified Taiwanese Patent Applications
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To apply for accelerated examination under the PPH pilot plan, the concerned Taiwanese patent application must meet either one of the following requirements:
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(a) |
it is an application filed with valid priority claim under Article 27 of the Taiwan’s Patent Act based on a corresponding US patent application; and
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(b) |
it is an application filed with valid priority claim under Article 27 of the Taiwan’s Patent Act based on a corresponding PCT patent application (designating USA and without priority claim).
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Where a Taiwanese patent application filed with valid priority claim based on multiple US or PCT applications (Figure D and E in Annex 1 for example), or where it is a Taiwanese divisional application of any of the patent applications as stated in Items (a) and (b), such Taiwanese patent application shall be deemed one qualified for PPH pilot program.
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2. |
At least one corresponding US application has one or more claims that
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have been determined to be patentable by the USPTO. The so-called "have been determined to be patentable" covers the following situations:
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(a) |
Where a "Notice of Allowability" states that "The allowed claim(s) is/are___";
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(b) |
Where the "Office Action Summary" in a "Non-Final Rejection" or "Final Rejection" states that "The allowed claim(s) is/are___";
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(c) |
Where the "Office Action Summary" in a "Non-Final Rejection" or "Final Rejection" states that "___ are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims". However, if a claim is rejected and the USPTO examiner indicates in the office action that certain features of the allowable/patentable invention have not been claimed and if properly claimed such claim may be given favorable consideration, the suggested and hypothetical claims are not regarded as allowable/patentable in this pilot program.
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(d) |
Where the "Office Action Summary" of an "Ex parte Quayle Office Action" states that "Claim(s) ___ is/are objected to", whereas the USPTO examiner indicates that "the claims would be allowable if rewritten or amended to overcome the objection set forth in this office action".
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All the claims on file, as originally filed or as amended at the time for seeking accelerated examination under the PPH, must sufficiently correspond to one or more of those claims indicated as allowable by the USPTO.
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The so-called "sufficiently corresponding" means that all the claims on file for the Taiwanese patent application are of the same scope as the claims for the US application, or that the claims on file for the Taiwanese patent application are narrower in scope than the claims for the US patent application. The so-called "same scope" means that the concerned claim sets are of the same scope or are they are different only because of translation reason. The so-called " claims with a narrower scope" occurs when a claim of the US application is amended to be further limited by an additional technical feature that is supported in the specification (description and/or claims). When possible, the claim on file should be presented in dependent form.
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The applicant has been notified that a substantive examination will begin shortly and TIPO has not issued a first examination report on the application.
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Documents Needed for accelerated examination under the PPH pilot program:
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When applying for accelerated examination, in addition to a written request, the following documents are needed:
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Copies of all office action(s) relating to the corresponding USPTO application(s).
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The applicant can either provide copies of the office actions with a request for accelerated examination under the PPH pilot program, or request that TIPO obtains the documents from the USPTO Public PAIR provided that the applicant must clearly identify the relevant information (document name and date) of the office actions to be retrieved in the PPH request form. The applicant must also submit copies of office actions which are relevant to patentability issue and are issued for the US application(s) after the grant of request for participation in the PPH pilot program before the TIPO (especially where USPTO might have reversed its previous holding of allowability/patentability). Translation(s) of the office action(s) is(are) not required.
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2. |
A copy of the claims determined to be allowable/patentable by the USPTO
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The claims determined to be allowable/patentable by the USPTO could be the amended claims, the originally filed claims, or the claims allowed and published by the USPTO. The applicant can either provide the claims together with a request for acceleration under the PPH, or request that TIPO obtains the claims from the USPTO Public PAIR system. A translation of the allowable/patentable claims is not required; however, the applicant is free to submit translation of the allowable/patentable claims as part of the supporting documentation when requesting for accelerated examination under the PPH for consideration by examiner.
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3. |
Copies of prior art references cited by the USPTO examiner
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All the prior art references cited in "Detailed Action" or "Reason for Allowance" as basis for refusal or allowability/patentability should be provided. If the cited prior art reference is a patent reference, there is no need to submit it. Because it is usually available to TIPO. If TIPO notify the applicant that it cannot access to such reference, the applicant must submit the reference. If the cited reference is a non-patent reference, the applicant has to submit it. A translation of the reference is not required. TIPO examiner may request translation(s) of cited reference(s) from the applicant.
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A claim correspondence table
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The applicant must submit a claim correspondence table which explains the sufficient correspondence of the claims determined to be allowable/patentable by the USPTO and the claims of the TIPO application for accelerated examination under the PPH pilot program. If the claims on file are found not sufficiently corresponding to one or more of the claims determined to be allowable/patentable by the USPTO, but the applicant prefers to amend the claims to ensure the sufficient correspondence to the allowable/patentable clams in the US application(s), the applicant must, at the time when applying for accelerated examination, file a brief expressing his/her intent to amend the claim(s), and TIPO will, by ex officio, notify the applicant by telephone to submit the amendment pursuant to Article 49, Paragraph 1 of the Patent Act, so that the applicant can thus amend the claims.
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If the claims on file are same as the claims determined to be allowable/patentable by the USPTO except for translation difference(s), the applicant may disclose in the request that "both claim sets are the same". If the two sets of claims are different from each other and the difference(s) does (do) not represent translation difference(s), the applicant must stated in the request the "sufficient correspondence" of each of the claims. If the corresponding US paten application has not been laid open, thus causing it impossible for TIPO to access to the file history via USPTO Public PAIR system, the applicant must submit the above-mentioned file history documents. If the same file history documents have been submitted in the earlier prosecution procedure, the applicant may state the fact and he/she does not need to duplicate the document submission.
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Procedure for accelerated examination under the PPH Pilot Program at TIPO
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The applicant files a form requesting accelerated examination under the PPH pilot program with TIPO, including relevant supporting documents. If the requirements are met, TIPO will conduct the accelerated examination. If the request does not qualify for participation in the PPH pilot program, the applicant will be notified and given opportunity to supplement the request. Unless the request is supplemented, the applicant will be notified and the patent application will be examined through the regular route.
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After a request for accelerated examination is filed, all documents submitted by the applicant afterward must be clearly affixed with a "PPH pilot program" marking to ensure that all future correspondence be correctly processed. If the Taiwanese application has not been laid-open at the time of filing a request for accelerated examination, the applicant must request an early laying open of his/her application according to Article 36, Paragraph 2 of Taiwanese Patent Act.
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