Deep & Far Newsletter 2012 ©
TW-Support Using Patent Prosecution Highway (PPH) Agreement (TW-SUPA) Examination Pilot Program
Under the Patent Prosecution Highway (PPH), on a condition that a part or all of the claims of a patent application are allowed or patented after the substantive examination in the Office of First Filing (OFF) in either the Taiwan Intellectual Property Office (TIPO) or a foreign Patent Office such as the USPTO, the applicant may request that the other Office, i.e. the Office of Second Filing (OSF), proceeds in a fast track the examination of a parallel foreign application of that patent application, filed in the OSF, by allowing the examiner to use the decision from the OFF. That is, the PPH may speed up the examination in the OSF through the use of the search and examination results of the OFF for the same invention, so that a faster, low cost and more efficient patent proctection for an applicant’s invention between TIPO and the foreign country may be achieved. The PPH pilot program between TIPO and USPTO started since September 1, 2011.
The TW-SUPA Pilot Program is a TW-Support Using the PPH Agreement pilot program, which further supports the PPH program between the TIPO and a foreign Patent Office, where the TIPO is the OFF of a TW application and a parallel foreign application is later filed in the foreign Patent Office which has a PPH agreement with TIPO. The TW-SUPA Pilot Program between the TIPO and the USPTO commenced since March 1, 2012. An applicant who intends to apply the TW-SUPA Pilot Program should follow the relevant requirements as follows.
1. The petitioning requirements
The patent application to be petitioned under this program shall meet the following requirements:
(1) The TW invention patent application is an international basic priority of a parallel foreign application filed in the Patent Office which cooperates with the TIPO in the PPH agreement.
(2) The timing for petitioning a PPH examination under this program shall be within six months following the filing of the parallel foreign application.
(3) A substantive examination for the TW application being about to begin has been informed, but a First Examination Notification has not been issued.
(4) The TW application shall be laid-open before petitioning the TW-SUPA.
In the TW-SUPA Pilot Program between USPTO and TIPO, an eligible US patent application refers to the US invention patent application, excluding the provisional application, the plant application, the design application, reissue application, the reexamination proceeding or the application subject to secrecy order.
2. Essential documents
The applicant must submit an application form, a certificate certifying that the parallel foreign application has been filed, the filing date and the application number have been obtained, and the international priority based on the TW patent application has been claimed, at least two prior art documents that are considered by the applicant as the most closely related to the subject invention, and the reasons why the claims of the subject patent application are patentable as compared with the prior art, and an official fee of NT$ 4,000.
3. Supporting measures
There are limits to the numbers of applications in different fields under the TW-SUPA Pilot Program, which the TIPO can handle per month; the number of petitions from an applicant under the TW-SUPA Pilot Program is limited to 8 per year; and the applications and the respective statuses thereof under the TW-SUPA Pilot Program will be updated periodically at the TIPO website.
4. Relevant process
If the petition meets the requirements as mentioned in the above and all required documents are submitted, the TIPO will notify the applicant that the relevant application will be examined under TW-SUPA pilot program and an expected date of an Office Action to be issued will be provided.
The applicant may file a request for the withdrawal from this program within a month of receiving the notification regarding the expected date of an Office Action to be issued.
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