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Taiwan-Japan PPH MOTTAINAI Became Permanently Effective on May 1, 2020

Hsiu-Ru Chien/Elina Yu


To better facilitate patent cooperation, Taiwan and Japan signed the PPH pilot program on May 1, 2012.  The program was amended to PPH MOTTAINAI in 2014 in order to relax the restriction wherein only the search and examination results by the Office of First Filing (OFF) are allowable as a reference for the Office of Second Filing (OSF), such that applicants are enabled to file an accelerated examination by the examination result of any Office of Earlier Examination (OEE).  The effective term of said PPH MOTTAINAI was extended for another 3 years in 2017.  As of May 1 2020, with consent from both Taiwan and Japan, the PPH MOTTAINAI has become permanently effective.  Thus, applicants will be able to request an accelerated examination under this PPH mechanism without any expiry date.

Taking the Taiwan patent application as an example: the following requirements have to be met if the applicant would like to rely on the examination results of the corresponding Japan patent application to request an accelerated examination under the PPH for his/her Taiwan patent application:

 

(I)       Both the Taiwan application and the corresponding Japan application shall have the same earliest date (either a priority date or filing date);

(II)     The corresponding Japan application shall comprise at least one or more claims determined to be allowable/patentable by the Japan Patent Office (i.e., clearly indicated to be "determined to be allowable/patentable" in the latest office action);

(III)   All claims, either at the time of filing the accelerated examination under the PPH or at subsequent amendment, must sufficiently correspond to one or more claims indicated as allowable by the Japan Patent Office;

(IV)  The applicant shall have been notified that a substantive examination will begin shortly, and that the Taiwan Intellectual Property Office has not issued a first office action.

To initiate the PPT mechanism, applicants have to submit the following documents:

(I)       A petition for Accelerated Examination under the PPH Program;

(II)     A copy of all office action(s) relating to the corresponding Japan application and their translations;

(III)   A copy of the claims determined to be allowable/patentable by the Japan Patent Office, and their translation;

(IV)  Copies of references cited by the Japan examiner;

(V)    A correspondence table of claims.

Currently, Taiwan has signed PPH programs with the United States, Japan, Spain, Korea, Poland, and Canada.  Applicants can take the information outlined here into consideration in order to craft optimal patent application strategies.

 



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