IP office hits pause to evaluate pilot programme to boost examiner expertise

With the accelerated development of science and technology comes more and more patent applications for advanced technologies and innovations. It is thus crucial for the Taiwan IP office (TIPO) that its patent examiners quickly grasp technical concepts in applications for patents in such fields. To answer this need, TIPO launched the Industry Collaborative Patent Interview pilot programme in November 2021 for a one-year trial period to give applicants a swift and smooth experience obtaining patent rights.

Overview of the programme

The initiative is based on a face-to-face interview with the applicant/inventor, through which examiners can gain a better understanding of application’s technical content and thus conduct an efficient and high-quality examination. Types of advanced technologies subject to the programme include stem-cell regenerative medicine, medical-care informatics, micro-LED display, neural networks, quantum computers, AI, blockchain and 5G. As a general rule, there is a limit of 10 applications per interview. If that number is exceeded, the applicant should submit interview requests separately for different technical fields.

Unlike in the Positive Interview programme for start-ups, TIPO will not conduct a patent search in advance and provide documentation prior to the interview. Generally, office actions are issued within six months of the interview.

Who may apply for the programme?

A request to use the Industry Collaborative Patent Interview pilot programme can only be filed after receiving an official notice of the substantive examination. Both examiner and applicant can initiate the process. The examiner may act upon their own initiative and notify the applicant of an interview; if the applicant accepts this interview invitation, they may explain the patent application’s technical content to the examiner. Alternatively, the applicant may also proactively submit a letter of intent in paper or electronic form to TIPO, which will then review the application and determine whether it falls under the category of “advanced technology”, thereby meeting the programme’s conditions. If it does, the application will be entered into this programme. If not, it will return to the general examination procedure.   

Key points to note

In order to improve examination efficiency and quality, technical personnel such as the inventor, applicant or an employee thereof, must attend the interview to explain the application’s technical content to the examiner. The technical personnel can be accompanied by a patent attorney, patent agent or lawyer, but non-technical personnel such as these are not permitted to attend alone. If technical personnel are unable to attend the interview in person, they can authorise the patent attorney, patent agent or lawyer to attend in their place, but they must be able to communicate with the examiner via video conference at the same time.

If the technical content involves trade secrets, it will not be documented in the records. The applicant can recover the relevant documents or arrange for someone to supervise the confidentiality process during the interview if needed.

Current implementation

According to information from TIPO, 16 applications were permitted to enter the programme until July 2022. Six of these were invited by examiners and the remaining 10 were requested by applicants. On average, office actions for these applications were issued within one month after the interview. 

Looking ahead

The Industry Collaborative Patent Interview pilot programme is expected to evolve into a fast-track programme specially tailored for those who apply for patents related to advanced technology. The trial period ended on 1 November 2022, so TIPO will now evaluate the outcomes of the programme and decide whether to renew or terminate it. We anticipate that while it may be adjusted slightly, the programme will ultimately continue in the future.