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According to current practice in Taiwan, the Taiwan Intellectual Property Office (TIPO) designates a period of time by which a reply to an Office Action (OA) for an invention patent or design patent case must be made. This time frame is determined by the following criteria: patent applicants who are R.O.C. nationals are required to file a response and/or amendments within two months from the day after receipt of the OA; in the case of foreign applicants, the deadline is three months from the day after receipt of the OA. If the applicant is unable to file a response and/or amendments within the designated period, he/she may apply to the TIPO for a one-time extension. The length of this extension also varies according to the nationality of the applicant — the extension is two months for patent applications submitted by R.O.C. nationals, and three months in the case of foreign nationals.
In actual practice, however, final deadlines often vary due to differences in calculation methods, and inconsistent deadlines may affect the management of cases by applicants and agents. Naturally, some questions have been raised concerning this issue. Factors that cause different calculation results for deadlines include the following:
lInconsistent commencement times for extensions:
As described above, when an applicant applies to the TIPO for an extension, the applicant is usually granted an extension of two or three months depending on his/her nationality. In practice, the TIPO will notify the applicant of the new deadline by providing an exact date.
In some cases, the TIPO will calculate the commencement date of an extension based on the date on which the patent applicant's request for an extension was received. In other cases, the commencement date is calculated based on the total period from the date following the applicant's receipt of the TIPO's OA, the originally designated period, and the period of extension (for example, in the case of an applicant being an R.O.C. national, the new deadline would be 4 months starting from the day after receipt of the OA; whereas for a foreign national, the new deadline would be 6 months starting from the day after receipt of the OA.)
In the case of the latter calculation method, the commencement date is fixed; hence the applicant can more easily plan for and manage the new deadline beforehand. However, in the former case, the new deadline will differ depending on the date which an application for extension is made, and the applicant—in order to obtain the longest possible extension of the deadline—will inevitably apply for an extension as late as possible before the initial deadline.
lDeadlines falling on a weekend or public holiday:
According to current practice, if a deadline falls on a weekend or public holiday, it is automatically extended to the following business day. In such a case, the question then becomes, whether such a rule also applies in regard to extensions. For example, if a foreign applicant were to receive an OA on June 6, 2014, for which the deadline was stipulated to be 3 months (i.e., September 6, 2014), and if the latter date happened to be a Saturday, then the applicant's deadline for filing a response would be extended to September 8, 2014. In this case, would the deadline of an extension, if applied for, subsequently fall on December 6, 2014 or December 8, 2014?
To solve the aforementioned issues, the TIPO announced a uniform calculation method for extensions on August 21, 2014. The deadline following an extension will now be 4 months (for R.O.C. nationals) and 6 months (for foreign nationals) from the day after receipt of the TIPO's OA. In addition, if the new deadline falls on a weekend or public holiday as calculated using this method, the deadline for filing a response and/or amendment will be automatically extended to the following business day.
