3.1

The TW invention patent application is:

3.1.1

n application which has validly claimed priority under Taiwan's Patent Act §27 to the US application(s), or

3.1.2

an application which has validly claimed priority under Taiwan's Patent Act §27 to the PCT application(s) without priority claim.

The TW application which has validly claimed priority to multiple US or PCT applications, or which is a divisional application validly based on the originally filed application that is included in 3.1.1and 3.1.2 above, is also eligible. The pilot program is not applicable to utility model applications and design applications.

3.2

At least one corresponding US application has one or more claims that have been determined to be patentable by the USPTO.
The allowable/patentable claims are

3.2.1

claims indicated in the item"The allowed claim(s) is/are___" in the"Notice of Allowability";

3.2.2

claims indicated in the item"Claim(s) ___ is/are allowed" in"Office Action Summary" of either a"Non‐final Rejection" or a" Final Rejection".

3.2.3

claims indicated in the item"Claim(s) ___ is/are objected to" in"Office Action Summary" of either a"Non‐final Rejection" or a"Final Rejection" and where the USPTO examiner indicates that the claims"are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims".

3.2.4

claims indicated in the item"Claim(s) ___ is/are objected to" in"Office Action Summary" of an"Ex parte Quayle Office Action" and where the USPTO examiner indicates that the claims"would be allowable if rewritten or amended to overcome the objection set forth in this office action".

3.3

All claims on file, as originally filed or as amended, for accelerated examination under the PPH must sufficiently correspond to one or more of those claims indicated as allowable in the USPTO.

3.4

The applicant has been notified that a substantive examination will begin shortly. And TIPO has not issued a first examination report on the application.

4.1

Copies of all office action(s) relating to the corresponding USPTO application(s).

4.2

A copy of the claims determined to be allowable/patentable by the USPTO.

4.3

Copies of the references cited by the USPTO examiner

4.4

A claim correspondence table

All the above documents need not translate to Chinese.

5.1

If the application does not qualify for participation in the PPH pilot program, the applicant will be notified accordingly and given opportunity to perfect the request. If not perfected, the application will be notified and the application will await action in its regular turn.

5.2

All subsequent correspondence with TIPO must be clearly identified as a PPH pilot program application to ensure that the correspondence is correctly processed.

5.3

If the TIPO application is not laid‐open at the time of request, the applicant must request her/his application be published early according to Taiwan Patent Act, Article 36, Paragraph 2.

5.4

If the application of OFF is RCE application, the submitted documents to TIPO shall including all Office Actions.

5.5

The PPH request cannot be submitted with the AEP (Taiwan Accelerated Examination Program) request in the same time. But if the request of PPH is rejected, applicant can submit the request of AEP.

5.6

Applicant can use the NOA of USA Application to submit the request of PPH even thought the issue fee has not been paid.

5.7

When the request of PPH is allowed, TIPO will not send any notice to applicant and directly place the application into the PPH examination prosecution.

5.8

If the claims on file do not sufficiently correspond to one or more claims determined to be allowable/patentable by the USPTO, but the applicant would like to amend the claims to sufficiently correspond to the allowable/patentable clams in the US application(s), the applicant must follow the Patent Act Article 49, Paragraph Two.
If the period (15 months from the filing date/priority date) of submitting the amendment is out of the Patent Act Article 49, Paragraph Two, the applicant must explain a claim amendment intention. TIPO will, by ex officio, notify the applicant by telephone to submit the amendment pursuant to the Patent Act Article 49, Paragraph One. The applicant could then amend the claims accordingly and submit the claim correspondence table at the same time.

5.9

When submitted the withdrawing of PPH request and the applicant want to withdraw the amendment, applicant shall indicate the will of withdrawing the amendment in the withdrawing letter. TIPO will deliver a Notice after grant of withdrawing to applicant.

5.10

The claim correspondence table has been submitted with the request of PPH and granted, the new claim correspondence table can not comply with the later amendment of claim. But the amended claim should sufficiently correspond.

PPH at TIPO

Condition 1 of AEP

Foreign Patent Office

USPTO

Non-limitation

Time of request

Before the first OA mailing

After notification of substantive examination or second OA

OFF and OSF

USPTO is OFF
TIPO is OSF

No

Sufficiently correspond

Yes

No

Office action copy and translation

All Office actions copy
Don't need translation.

All Office actions copy

Claim copy and translation

All allowable claims
Don't need translation

All allowable claims and translation

Claim correspondence table

Indicate the reason of sufficiently correspond

A statement of differences in claims, if there is no difference between the two, the applicant should mark the box"no differences" in the application form.

Notification response after all documentations are submitted

Shorter than the condition 1 of AEP

6 months

7.1

The US application is an original non-provisional utility application. Provisional applications, plant applications, design applications, reissue applications, reexamination proceedings, and applications subject to a secrecy order are excluded and not subject to participation in the PPH.

7.2

The U.S. application validly claims priority to one or more corresponding Taiwanese application(s), or is a national stage entry of a PCT application that validly claims priority to one or more corresponding Taiwanese application(s).

7.3

The Taiwanese application(s) must have at least one claim that was determined by the TIPO to be allowable or patentable.

7.4

All the claims in the U.S. application for which a request for participation in the PPH pilot program is made must (be amended to) sufficiently correspond to the allowable or patentable claims in the Taiwanese application(s). Claims will be considered to sufficiently correspond where, accounting for differences due to translations and claim format requirements, the claims are of the same or similar scope.

7.5

Examination of the U.S. application for which participation in the PPH pilot program is requested has NOT begun.

8.1

A request for participation in the PPH pilot program and a request that the U.S. application be advanced out of turn for examination by order of the Director to expedite the business of the Office under 37 CFR 1.102(a). Note that where the Taiwanese application that contains the allowable or patentable claims is not the same application for which priority is claimed in the U.S. application, the applicant must identify the relationship between the Taiwanese application that contains the allowable or patentable claims and the Taiwanese priority application claimed in the U.S. application.

8.2

A copy of the allowable or patentable claims from the Taiwanese application(s) along with an English translation thereof and a statement that the English translation is accurate. If the TIPO office action does not explicitly state that a particular claim is allowable, the applicant must include a statement that no rejection has been made in the TIPO office action regarding that claim, and therefore, the claim is deemed allowable by the TIPO.

8.3

A claims correspondence table in English, indicating how all the claims in the U.S. application correspond to the allowable or patentable claims in the Taiwanese application(s).

8.4

A copy of all the office actions (whch are relevant to patentability) from each of the Taiwanese application(s) containing the allowable or patentable claims that are the basis for the request, along with an English translation thereof and a statement that the English translation is accurate. In addition, the applicant must submit copies of any office actions (which are relevant to patentability) from the Taiwanese application(s) issued after the grant of the request for participation in the PPH pilot program in the USPTO (especially where TPO might have reversed a prior holding of allowability).

8.5

An information disclosure statement (IDS) listing the documents cited by the TIPO examiner in the TIPO office action (unless such an IDS has already been filed in the U.S. application). The applicant must submit copies of all the documents cited in the TIPO office action (unless the copies have already been filed in the USPTO application) except U.S. patents or U.S. patent application publications.

8.6

A preliminary amendment, if necessary.

If any of the documents identified in items 8.2, 8.4, and 8.5 above have already been filed in the U.S. application prior to the request for participation in the PPH pilot program, it will not be necessary for the applicant to resubmit these documents with the request for participation. The applicant may simply refer to these documents and indicate in the request for participation in the PPH pilot program when these documents were previously filed in the U.S. application.

9.1

Where the request for participation in the PPH pilot program and special status are granted, the applicant will be notified and the U.S. application will be advanced out of turn for examination. In those instances where the request for participation in the PPH pilot program does not meet all the requirements set forth above, the applicant will be notified of the defects and given one opportunity to perfect the request. If the renewed request is perfected and examination has not begun, the request and special status will be granted, the applicant will be notified and the U.S. application will be advanced out of turn for examination; otherwise, the applicant will be notified and the application will await action in its regular turn.

Once the request for participation in the PPH pilot program and special status have been granted to the U.S. application, the U.S. application will be taken up for examination by the U.S. examiner before all other categories of applications except those clearly in condition for allowance, those with set time limits, and those that have been granted special status for "accelerated examination".

9.2

Request for participation in the PPH pilot program and special status granted in a parent application will not carry over to a continuing application. The applicant must meet all the conditions set forth above in order for special status to be granted in the continuing application.

9.3

Any claims amended or added after the grant of the request for participation in the PPH pilot program must sufficiently correspond to one or more allowable or patentable claims in the Taiwanese application(s). The applicant is required to submit a claims correspondence table along with the amendment. If the amended or newly added claims do not sufficiently correspond to the allowable or patentable claims in the Taiwanese application(s), the amendment will not be entered and will be treated as a non-responsive reply.

Different Point

At USPTO

At TIPO

Sufficiently correspond

Same or similar scope

Same or similar scope, or
narrowed than the USA application claims

Decision Notice of PPH request delivery

Yes

No

Translation

Yes

No

Ex officio notice to amend

No

Yes

After grant of PPH request, new claims correspondence table shall be submitted along with the amendment?

Yes

No