| Legislative： |
Date amended: 6/October/2021
Date effective: 1/January/2022 |
| Content： |
Starting January 1, 2010, TIPO began accepting requests for the Accelerated Examination Program
(AEP), revised out of its earlier pilot version launched on 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; the phrasing
“green energy technologies” was amended to read “green technologies,” effective on January 1,
2022.
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.
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 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.
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).
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 6 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
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 <literature
number> 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 <literature number> are that <explain their technical differences>, and <provide reasons
why utilization of technologies involved in Claim 1 cannot be easily accomplished by a person
having ordinary skill in the art>. 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” <technical features> and makes use of
“XXX” <technical features> 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 <energy
saving effect>. 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 <energy saving effect>. 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 of the
“Offshore Wind Power Project.” The documents provided include a copy of the project’s title page
and research abstract.
C. AEP Process Flow Chart
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