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A major challenge for major patent offices around the world is a huge patent backlog. Both the Taiwan Intellectual Property Office (TIPO) and PRC State Intellectual Property Office(SIPO) encounter the same problem. This article discusses the measures taken by TIPO and SIPO to ease the workload for accumulated patent applications.
As of January 1, 2009, in order to shorten the examination time for invention patent applications, TIPO has launched the Accelerated Examination Program (AEP) and accepted applications for AEP since January 1, 2009 for a one-year trial period. In the one-year trial period, an applicant could file an AEP application if the foreign counterpart of the Taiwan patent application has been granted under substantive examination by a foreign patent authority (Condition 1). Due to the wide acclaim of the one-year trial period for AEP, TIPO has expanded the Conditions (Conditions 2 and 3 indicated below), for filing an application for AEP since January 1, 2010.
Condition 2: The EPO, JPO, or USPTO has issued an OA during substantive examination but yet to allow application’s foreign counterpart; and
Condition 3: The invention application is essential to commercial exploitation.
An application for AEP can be filed with TIPO if one of the three conditions identified above is met, regardless of whether examination of such application has begun. In principle, a notification of responsive examination opinion or decision will be issued within 6-9 months after all necessary documents have been submitted; however, the actual amount of time a notification would be issued depends on the technical field of the case.
The Director General “Mei-Hua Wang” of TIPO indicated that TIPO will implement a five-year plan to clear up the accumulated patent applications. It is estimated that the accumulated patent applications will be reduced to 75,900 cases by 2015 and the average examination time will be shorten from 36.8 months to 22 months.
On June 5, 2008, the State Council of the PRC promulgated the "The Outlines of National Intellectual Property Tactics,” which explicitly indicated measures on how to tackle the patent and trademark backlog. With the implementation of the Outlines, examination ability on Chinese patent applications has improved greatly.
If an applicant wishes to expedite patent prosecution, the applicant can request for substantive examination (please refer to Article 35 of the China Patent Act) and earlier publication (please refer to Article 34 of the China Patent Act) at the same time. In addition, an applicant for an invention patent application should submit the examination references for its foreign counterpart(s) to the SIPO (please refer to Article 36 of China Patent Law) when requesting substantive examination, equivalent to the AEP in Taiwan.
However, an accelerated examination for an invention patent application in China applies to the following conditions only:
A. An invention patent application is found to be in conformity with the requirements for preliminary examination; and
B. Only a domestic applicant can apply for an accelerated examination of invention patent applications. Foreign applicants are not entitled to apply for such accelerated examination. A recommendation opinion from the Intellectual Property Office or the corresponding agency of the province, municipality, and autonomous region where the applicant resides or has its principal office should be submitted when requesting the accelerated examination.
On the contrary, an AEP application can be filed with the TIPO based on the allowed or granted Chinese counterpart(s) of the Taiwan invention patent application under substantive examination (condition 1).
In summary, governmental organizations in Taiwan and China have taken effective measures to tackle the patent backlog. At present, China has obtained remarkable results in this respect.
The topic of the next issue of the newsletter: The Cross-Strait Agreement on Intellectual Property Right (IPR) Protection and Cooperation
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