On 1 May 2012 Taiwan and Japan signed a pilot prosecution highway (PPH) programme to better facilitate patent cooperation.(1)
In 2014 the programme (known as the PPH MOTTAINAI)(2) was amended to relax a restriction which meant that only search and examination results of the office of first filing were permissible as a reference for the office of second filing. Under the PPH MOTTAINAI, applicants could file an accelerated examination by submitting the examination result of any office of earlier examination. In 2017 the programme was extended by three years.
On 1 May 2020 the PPH MOTTAINAI became permanently effective. Thus, applicants can now request accelerated examination under the PPH MOTTAINAI without an expiry date.
Using a Taiwanese patent application as an example, the following requirements must be met if applicants wish to rely on the examination results of a corresponding Japanese patent application to request an accelerated examination under the PPH MOTTAINAI for their Taiwanese patent application:
- both the Taiwanese and corresponding Japanese application must have the same earliest date (either a priority or filing date);
- the corresponding Japanese application must comprise at least one or more claims determined to be patentable by the Japan Patent Office (JPO) (ie, clearly indicated to be “determined to be patentable” in the latest office action);
- 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 deemed to be patentable by the JPO; and
- the applicant must 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 accelerated examination under the PPH MOTTAINAI, applicants must submit:
- a petition for accelerated examination under the PPH programme;
- a copy of all office actions relating to the corresponding Japanese application and their translations;
- a copy of the claims deemed to be patentable by the JPO and their translations;
- copies of references cited by the Japanese examiner; and
- a corresponding table of claims.
Applicants should consider the above requirements to craft an optimal patent application strategy.
For further information on this topic please contact Hsiu-Ru Chien at Lee and Li Attorneys at Law by telephone (+886 2 2763 8000) or email (firstname.lastname@example.org). The Lee and Li Attorneys at Law website can be accessed at www.leeandli.com.
(1) Taiwan has signed PPH programmes with the United States, Japan, Spain, South Korea, Poland and Canada.
(2) Mottainai is a Japanese word meaning ‘wasteful’.
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