Dear Clients:  

As number of new patent applications filed in the ROC (Taiwan) continues to increase over the past years, to shorten the time spent on patent examination and expedite the issuance of patent grant, the Intellectual Property Office (IPO) announced on 7 November 2007 that the IPO started taking into consideration during the patent examination process the search reports and examination results of foreign counterparts of the ROC patent applications.  The new measure took effect as of October 2007.    

Implementation of the above new measure is explained as follows:

I.   Patent Applications to Which the New Measure Applies

Under the current practice, search reports and examination results of corresponding foreign patent cases that are taken into consideration by the IPO include those issued by the USPTO, the JPO, the EPO and the PCT offices concerned.  The new measure applies to all the ROC invention patent applications regardless of whether such ROC patent applications are filed based on earlier filed foreign patent applications or such ROC patent applications are first filed anywhere in the world, followed by later filing in foreign countries.

II.   Implementation of the New Measure

Currently, the new measure is implemented in the following steps:

1. When conducting the examination of an ROC patent application, the patent examiner in charge will first conduct domestic patent prior art searches.

2. If search report(s) and/or examination result(s) of the corresponding foreign patent application(s) is (are) available, the patent examiner will not conduct foreign patent prior art searches, and he (she) will check whether the claims of the ROC patent application are the same as those of the corresponding foreign patent application(s).

3. If the claims of the ROC patent application are the same as those of the corresponding foreign patent application(s), the examiner will take into consideration the search report(s) and examination result(s) of the corresponding foreign patent application(s).

III.   Our Comments

To shorten the process of patent examination and to expedite issuance of decisions for the ROC patent applications, the IPO encourages patent applicants to voluntarily submit search reports and/or examination results of the corresponding foreign patent applications as soon as they become available.

Given the above, we suggest that clients send us the search reports and/or examination results as soon as they become available so that we can discuss how to best utilize said documents, such as submitting them to the IPO directly, or submitting briefs and/or amendments to ensure the patent examiners will not be misled by the search reports and/or examination results and thus issue decisions unfavorable to our clients.  Please note that, while the search reports and examination results for corresponding foreign patent applications may be taken into consideration, the IPO shall conduct examination of the ROC patent applications independently. In other words, the results of examination of corresponding foreign patent applications will not determine the examination result of the ROC counterpart patent applications. 

We hope that you find the above information helpful.  Please feel free to contact us if you have any question or need any assistance from us.