Newsletter
Draft Revisions to the Invention Patent Application Delayed Examination Program
The Intellectual Property Office of the Ministry of Economic Affairs recently announced "Draft Revisions to the Invention and Design Patent Application Delayed Examination Program." These revisions aim to further assist patent applicants in patent portfolio management and commercialization strategies. Key changes in this draft include relaxing specific conditions for delaying substantive examination of patent applications and consolidating the relevant regulations for both invention and design patents into a unified set of procedural guidelines.
The draft introduces several significant changes to the current program, as outlined below:
1. Requesting a delay in substantive examination before the re-examination office action is issued:
Under the current regulations, once an office action or a decision has been issued, the applicant is no longer allowed to request a delay in substantive examination. This revision modifies that rule by allowing applicants to request a delay in substantive examination before receiving the first office action during the re-examination stage.
2. Removal of the restriction on delaying substantive examination for applications that have been divided:
Previously, the program prohibited applicants from requesting a delay in substantive examination for invention patent applications that had been divided. The draft revision eliminates this restriction by permitting applicants to request a delay in substantive examination even after filing a divisional application.
3. No delay for applications under expedited examination:
A new provision in the draft revision specifies that if an application for expedited examination has been submitted, no request for delaying substantive examination may be made for the relevant invention patent application.
4. Integration of delayed substantive examination programs for invention and design patents:
Due to the similarities between the procedures for delaying substantive examination for invention and design patents, this revision combines them into a single set of guidelines under the title "Key Points for Delayed Substantive Examination of Invention and Design Patent Applications."
Since its introduction in 2015, the Invention Patent Application Delayed Examination Program has aimed to meet the needs of patent applicants when developing their patent strategies and commercialization plans. However, with the evolving needs of applicants and shifts in the patent environment, this draft revision further expands the applicable conditions, providing greater flexibility and more options for patent applicants.