Fast-Tracking Patent Applications in Asia

The process of patenting an invention can be cumbersome, resulting in Applicants waiting several years before their patents are picked up for examination. Various jurisdictions have realized the pressing need to shorten the gap between filing and grant of a patent application, resulting in the establishment of programs to expedite examination. A summary of current programs for fast-tracking patent applications in several Asian countries is provided.

China

Since August 1, 2012, prioritized examination has been available in China for applications relating to energy conservation, environmental protection, green technology, and in other areas of significance to the national interest or public health. In order to participate in the prioritized examination program, Applicants are required to submit an examination report issued by a qualified patent examination authority or a search report issued by a recognized and competent entity. From the grant of the prioritized examination request, a first office action should issue within 30 working days and the examination should conclude within one year from the date of grant of the request.

China participates in the Patent Prosecution Highway (PPH) program — a program which allows Examiners to use positive examination results in another jurisdiction — with many foreign patent offices including Europe, Japan, Korea, and United States.

Japan

Japan provides for three types of expedited examination: (a) preferential examination; (b) accelerated examination; and (c) super accelerated examination. Preferential examination can be requested for an application where a third party is practicing or planning to practice the claimed invention. Under the preferential examination program, Applicants can receive a first office action within about two months. Accelerated examination, which includes accelerated examination for green technology, requires that the Applicant submit either an examination report from another country or the results of a prior art search conducted by the Applicant. Under the accelerated examination program, Applicants can receive a first office action within about two months. Super accelerated examination requires that the claimed invention be presently practiced or planned to be practiced within two years from the date of the request. Under the super accelerated examination program, Applicants can expect to receive a first office action within one month.

Japan participates in the PPH program with many foreign patent offices including China, Europe, Korea, the Russian Federation, Australia, United Kingdom, and United States.

South Korea

The Korean Patent Office (KIPO) provides for accelerated examination by submission of a prior art search report from an officially designated search organization. Upon submission of a request for accelerated examination, Applicants can expect to receive a first office action within 2 to 4 months. The KIPO also instituted a super-accelerated examination program for green technology in October 2009. Under the super-accelerated examination program, Applicants must submit a prior art search report from an officially designated search organization. The KIPO estimates that a first office action should issue within one month of the request for super-accelerated examination.

South Korea also participates in the PPH program with many foreign patent offices including China, Europe, Japan, United States, Australia, and United Kingdom.

Taiwan

The Taiwanese Intellectual Patent Office provides for accelerated examination under the following conditions: (a) applications in which a corresponding foreign application has been examined and allowed; (b) applications in which a corresponding application in Europe, Japan, or the United States has issued an office action; (c) applications for inventions that have been put into practice for commercial use; and (d) applications which involve green technologies. There is no fee under conditions (a) and (b) and a fee of NT $4000 (approximately $130 USD) under conditions (c) and (d). Under this program, Applicants can expect that a first office action will issue within about 9 months.

Taiwan participates in the PPH program with United States, Japan, and Spain.

India

Since May 2016, the Indian Patent Office has offered the option to request expedited examination for national phase applications provided that the Applicant has selected the Indian Patent Office as the International Search Authority or the International Preliminary Examining Authority or the Applicant is a startup company. Under the expedited examination program, Applicants can expect a first office action within three to four months of receiving the request.

India does not currently participate in the PPH program with any foreign patent office.

ASPEC Program

The ASEAN Patent Examination Cooperation (ASPEC) program was launched in 2009 and is a work-sharing initiative that involves 9 member states: Brunei, Cambodia, Indonesia, Lao PDR, Malaysia, Philippines, Singapore, Thailand, and Vietnam. Under ASPEC, a patent Applicant receiving a favorable search and examination report in one member IP Office can apply to have that report taken into account during prosecution in other member IP Offices. There is no charge to file under the ASPEC program; however, local search and examination fees in member IP Offices apply. Although a favorable examination report in one Office is not binding on other Offices, the initial examination report should speed the examination process. ASPEC also operates in the English language in all member Offices — preventing the need for translations. ASPEC applications are also advanced out of turn until grant.

This article appeared in the March 2017 issue of Global Patent Prosecution Newsletter.