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Accelerated Examination Program (AEP) in Taiwan and China:a Fast Track to Global Patent Protection
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. By the end of 2009, the number of pending Taiwan invention patent applications filed by domestic applicants had reached up to 140,600 and the average examination time therefor is 36 months. Similarly, the number of Chinese patent applications filed in 2009 reached 976,686 cases which was up 17.9% compared to the same period of the previous year. This article discusses the measures taken by TIPO and SIPO to ease the workload for accumulated patent applications.
I. Measures taken by the Executive Yuan:
A. The Executive Yuan plans to spend $100-200 million annually to accelerate examination of invention patent applications from 2010 to 2012. The goal is to shorten the examination time from 36 months (the current average examination time) to 22 months in 2012.
B. The Executive Yuan plans to set aside a fund dedicated to patent and trademark prosecution and utilize the fund to cover expenses incurred for outsourcing such as searching and classification of patent applications.
C. The Executive Yuan plans to impose different rates according to industry sectors to accelerate the business cycle in the hope that high-tech industries can obtain patent protection for their inventions in a more efficient way. In the future, higher examination fees might be charged for expedited patent applications.
II. Measures taken by TIPO:
According to statistic data through the end of 2009, the number of pending invention patent applications filed by domestic applicants had reached up to 140,600 and the average examination time therefor exceeded three years. Compared with South Korea, the average examination time is about 15 months, which is below one half of the examination time spent in Taiwan. More importantly, the life cycle of high-tech products is usually about one or two years, which is much shorter than the average examination time, resulting in serious impact on the competitiveness of products from domestic industries. It is estimated that patent pendency will be prolonged to 46 months at the end of 2012 if no changes are made to the examination infrastructure.
The excessive delay in patent examination is due to insufficient manpower for examination of invention patent applications. There is an annual gap of about 19,000 cases between the number of an increasing influx of patent applications for which substantive examination has been requested and the number of patent applications which have completed examination. The Director General “Mei-hua WANG” of TIPO said that the accumulated patent applications will be reduced to 70,000 cases by 2015 and the average examination time will be shorten to 22 months.
A. An increase of manpower for patent examination:
The TIPO has proposed to amend the TIPO Re-Organization Statute including an increase of Patent Examiners and other measures to tackle the patent backlog. The proposal will be submitted to the Legislative Yuan for approval.
B. Set up external search agencies and a fund designated for patent prosecution only:
The TIPO hopes that the annual net income of 1.8 billion NT dollars can only be used for the funding of patent prosecution.
C. Accelerated Examination Program (AEP)
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.
Invention patent applicant who has been notified by TIPO that the examination or re-examination of their application will begin shortly may apply for accelerated examination with the necessary documents, if one of the three conditions identified above is met, regardless of whether examination of such application has begun. No official fee for filing an AEP application is required to be paid if one of the three conditions is met. 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.
III. Domestic applicants filed a huge amount of AEP applications at the end of 2009
As there is a huge amount of invention patent applications to be examined and examination of patent applications is carried out on the basis for each claim, it is estimated that it takes around 36 months to complete examination of an invention patent application. Since the average examination time for an AEP application is about 2 months, which is much shorter than that for an invention application due to Hon Hai Precision Ind. Co., Ltd. and AU Optronics Corp. (AUO) filing a huge amount of AEP applications during October to December 2009. According to TIPO data, the total number of AEP applications filed during Jan. to Oct. 2009 amounted to 475 cases, i.e. AEP applications filed per month during the period was 47.5 cases; however, the AEP applications surged to 261 cases in a single month in December 2009, making it a record. In addition, domestic applicants far exceed foreign applicants in terms of AEP applications and the AEP system has definitely attracted foreign applicants to file more Taiwan invention patent applications.
III. In China:
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 and the number of the licensed patents was up by 41.2% compared to the same period of the previous year.
According to the SIPO, patent applications filed from Jan. to Oct. 2009 reached 712,300 cases which was up 12% compared to the same period of the previous year. At present, China has leapt into the front ranks of the world in terms of examination time for Chinese invention patent applications. According to SIPO statistic data, the volume of invention patent applications* grew by 30% annually. From January to September 2009, the number of invention patent applications* exceeded 150,000 cases, up 40.9% compared to the same period of the previous year and it has exceeded the total number of invention applications* in 2008.
I. The examination time has been shortened
On average, the examination time for a patent application has been gradually shortened. Till the end of 2009, the examination time for an invention patent application was 25.8 months, about the same as that in the previous year. The prosecution time for a Utility Model patent application and a New Design was 5.8 and 5.5 months respectively which was slightly shorter compared to that in the previous year. The average examination time for re-examination and invalidation was 7.4 months, down 2.4 months compared to that in the same period of the previous year.
II. The satisfaction rate for patent examination has risen according to a survey conducted by the SIPO. The satisfaction rate for patent prosecution is 79.4, superior to that of 77.3 in 2008.
III. How to file an AEP for invention patent application in China
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 applications refers to those applications for which substantive examination has been requested and examination therefor has been completed