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Accelerated Examination Program (AEP)

Accelerated Examination Program (AEP)


Date amended: 1/April/2016
Date effective: 1/April/2016


Starting January 1, 2010, TIPO began accepting requests for the Accelerated Examination Program (AEP), revised out of its earlier pilot version launched January 1, 2009, to allow for more flexibility in the program while taking into account applicants’ rights and interests.


In observance of user-pay principle, applicants requesting AEP on and after July 1, 2011 make a payment for AEP request fees as stipulated in Condition 3.


To encourage green technology development, TIPO added Condition 4, stipulating that applicants requesting AEP on and after January 1, 2014 make a payment for AEP request fees.


Having been notified by TIPO that the invention application will soon be undergoing substantive examination or re-examination, the applicant whose invention application meets one of the following conditions may proceed to request AEP with relevant documents, regardless of whether such application has undergone substantive examination or re-examination.


A. The Four Conditions


1. Condition 1: The corresponding application has been approved by a foreign patent authority under substantive examination


The so-called “corresponding foreign application” (or foreign counterpart) is one belonging to the same patent family as the TIPO application and whose priority may or may not have been claimed in Taiwan. Such affinity is determined upon whether the claims of the patent application have been disclosed in the specification or drawings of its foreign counterpart.


The applicant requesting AEP under Condition 1 should provide all of the OAs and, if any, search reports issued prior to the approval of the foreign counterpart of the patent application.


The required documents include:


a. A copy of the AEP request form;


b. A copy of the approved patent claims issued by a foreign patent authority (with Chinese translation), or a copy of notice of allowance and to-be-published patent claims issued by a foreign patent authority (with Chinese translation);


c. All of the OAs and, if any, search reports issued by a foreign patent authority; a summary in Chinese must be provided alongside with these documents written in languages other than Chinese or English;


d. If there are differences, an explanation thereof between Chinese translation of the claims in “b” and those in the application filed with TIPO (please refer to B. Format 1, Example 1); if not, the applicant should tick the box on “not different” in the request form;


e. A copy of non-patent literature indicating (as in “c”) the foreign counterpart’s failure of compliance with the novelty or inventive step requirements (patent literature not required); and.


With regard to the required documents, those mentioned in “a”-“c” must be provided; in “d,” no explanation needed if there isn’t any difference; and in “e,” no non-patent literature needed if there isn’t any failure of compliance. In addition, the applicant may provide any documents to expedite the examination process (e.g. a written reply to foreign patent authority or, reasons for patentability of the pending TIPO application, regarding which the citations indicate its foreign counterpart’s failure of compliance with the novelty and/or inventive step requirements).


Unlike other foreign patent authorities running PPH where accelerated examination requests (similar to Condition 1) are restricted to patent applications that have not begun examination (i.e. the applicant not having received OA from patent authority), TIPO accepts AEP requests for all applications currently undergoing examination. It should be noted that the applicant having narrowed patent claims in accordance with the OA issued by TIPO may not request AEP using foreign application whose claims have been approved by a foreign patent authority and are broader in scope than the one with narrower claims.


In principle, the examination results (a notification of responsive examination opinions, final notice or written decision of examination) will be issued within 6 months after all the relevant documents have been received. The actual examination pendency, however, may vary depending on the technical field(s) of respective cases.


2. Condition 2: The EPO, JPO or USPTO has issued an OA during substantive examination but has yet to approve the application’s foreign counterpart


The applicant requesting AEP should provide at least the first OA (issued by the EPO, JPO, or USPTO) and the EPO’s European search report, or the PCT-designated International Search Report (ISR) from the EPO, JPO, or USPTO.


The required documents include:


a. A copy of the AEP request form;


b. A copy of patent claims based upon the OA issued by the EPO, JPO, or USPTO (with Chinese translation);


c. A copy of the OA and search report issued by the EPO, JPO or USPTO; all of the OAs and, if any, search report issued by a foreign patent authority; a summary in Chinese must be provided alongside with these documents written in languages other than English;


d. If there are differences, an explanation thereof between Chinese translation of the claims in “b” and those in the application filed with TIPO (please refer to B. Format 1, Example 1); if not, the applicant should tick the box on “not different” in the request form;


e. The applicant should provide reasons for patentability of the pending TIPO application (please refer to B. Format 2, example 2), with respect to citations in the OA or search report (as mentioned in “c”) indicating its foreign counterpart’s failure of compliance with the novelty and/or inventive step requirements;


f. A copy of non-patent literature containing citations as mentioned in “e” (patent literature not required); and


With regard to the required documents, those mentioned in “a”-“c” must be provided; in “d,” no explanation needed if there isn’t any difference; and in “e” and “f,” no non-patent literature needed if there isn’t any failure of compliance. In addition, the applicant may provide any documents to expedite the examination process (e.g. a written reply to foreign patent authority or subsequent OAs).


The pendency for TIPO’s issuing examination results for AEP requested under Condition 2 may vary depending on the following. For instance, if there is no difference between the pending TIPO application and its foreign counterpart (the “not different” in “d”), the examination results (a notification of responsive examination opinions, final notice or written decision of examination) will be issued within 6 months after all the relevant documents have been received. In case there are differences, the examination results (a notification of responsive examination opinions, final notice or written decision of examination) will be issued within 9 months after all the relevant documents have been received. The actual examination pendency, however, may vary depending on the technical field(s) of respective cases.


3. Condition 3: The invention application is essential to commercial exploitation


The applicant whose invention has been put into practical use (e.g. commercial exploitation) may request AEP to ascertain its patentability at the earliest. The applicant requesting AEP under Condition 3 should provide a copy of the AEP request form, proofs of evidence indicating the invention’s commercial exploitation (e.g. licensing agreements, marketing brochures, and commercial catalogs), and make a payment of NT$4,000 (per request).


In principle, the examination results (a notification of responsive examination opinions, final notice or written decision of examination) will be issued within 9 months after all the relevant documents have been received. The actual examination pendency, however, may vary depending on the technical field(s) of respective cases.


4. Condition 4: Inventions related to green technologies


The applicant whose invention involves green technologies may request AEP to ascertain its patentability at the earliest. The applicant requesting AEP under Condition 4 should provide a copy of the AEP request form, a written explanation indicating the connection between the invention and green technologies (please refer to B. Format 3, Example 3), and make a payment of NT$4,000 (per request).


In Taiwan, green technology areas include both the WIPO’s definition for areas of alternative energy technology and the green industries referred to under the Executive Yuan’s “Rising Green Energy Industry Project” and “National Energy Plan.” The applicant whose inventions involve the following may request AEP:


(1) Technologies for improving energy conservation and for developing new sources of energy, or renewable energy vehicles; or


(2) Technologies for carbon reduction and resource saving.


The applicant requesting AEP must make sure that the claims of the invention should directly relate to the aforementioned green technology areas recognized in Taiwan. In addition, the applicant may do so by providing documents of proof (e.g. specification or drawings).


In principle, the examination results (a notification of responsive examination opinions, final notice or written decision of examination) will be issued within 9 months after all the relevant documents have been received. The actual examination pendency, however, may vary depending on the green technology field(s) of respective cases.


Applicants wishing to request AEP should visit TIPO website and download the request form. To learn more about this program, go to the “AEP Q&A” section of the website.


B. Format


1. Example 1: Explanation of differences between pending claims at TIPO and the claims of foreign counterpart


AEP


2. Example 2: Reasons for patentability


(Novelty) Independent Claim 1 of this pending application contains the term ‘rails’ in the description of its device. In comparison, however, the device disclosed in Citation 1 does not contain such term. In comparison to Citation 1, therefore, it is Claim 1 that meets the novelty requirement.


(Inventive step) The differences between independent Claim 1 of this pending application and Citation 2 are that , and . In comparison to Citation 2, therefore, it is Claim 1 that meets the inventive step requirement.


3.Examples 3: Description of the invention involving green technologies


(1) The invention “Solar Cell” in Claim1 contains “OOO” and makes use of “XXX” which can promote the efficiency of photovoltaic system. Therefore, the claimed invention in this application involves green technologies.


(2) The invention “Metal-Oxide Compound” in Claim1, as mentioned in paragraph 【OOOO】of the specification, when applied to LED illumination, can provide high luminous efficiency . Therefore, the claimed invention of this application involves green technology.


(3) The invention “hybrid engine” in Claim 1, as mentioned in paragraph 【OOOO】of the specification, combines a conventional internal combustion engine with an electric propulsion system to effectively reduce carbon dioxide emission . Therefore, the claimed invention of this application involves green technology.


(4) The invention “variable-frequency generator,” as mentioned in Claim 1, is the R&D result under the “National Energy Plan” and “Offshore Wind Power Project” of the Executive Yuan. The documents provided include a copy of the project’s title page and research abstract.


ChartAEP 
Remark:  Required documents;△ Conditional documents; No document required。

Download: 1050401發明專利加速審查作業方案(英文).doc