Start-ups can gain design protection faster with new accelerated examination programme

In an effort to enhance Taiwan’s design application examination services, the Taiwan Intellectual Property Office (TIPO) launched an accelerated examination pilot programme on 1 September 2023, which will run until 31 December 2024. Once it ends, TIPO will evaluate its effectiveness to decide whether to continue it in its current form. Under the programme, the time between filing a design patent application and first office action will be reduced from four to two months.

The programme allows an applicant to file an accelerated examination request for its design patent application on or after the date it receives an official communication notifying the applicant of an impending substantive examination. A request for accelerated examination may not be filed after the first office action. While there is no official fee for the request, applicants are required to file electronically. Once TIPO approves the request, the examiner will issue the result of the analysis within two months of the request date.

There are three grounds on which applicants may rely to file a request for accelerated examination:

• third-party commercial implementation;
• having a recognised design award; or
• having start-up status.

When relying on the first ground – that a third party has commercially implemented the applicant’s design – the applicant is required to identify the third party and specify when it began commercial implementation. The applicant must also explain how the third party has implemented the design and submit evidence of this, which might include a product catalogue or a newspaper or magazine story.

The second basis is that the applicant’s design has received a well-known domestic or international design award. TIPO recognises the following awards for this purpose:

• Taiwan’s Golden Pin Design Award;
• Germany’s iF Design Award;
• Germany’s Red Dot Design Award;
• Japan’s Good Design Award; and
• the US International Design Excellence Awards.

To support an application based on an award, the applicant is required to submit the awarded certificate of merit and documentary evidence of the design’s appearance.

As for the design application being filed by a start-up, TIPO permits a start-up to file requests for accelerated examination for up to three design applications per year. Under Taiwan’s company law (or in the case of an international company, the corresponding foreign law), TIPO recognises a company as a start-up if it has been incorporated for under eight years. If the design application claims priority, the company’s start-up status runs from the date it was incorporated to the earliest priority date claimed by the design application. If the applicant is an international company, it is required to submit a certified document showing the incorporation date with its Chinese translation. An affidavit is required if the certified document is not the original.

This programme offers applicants the opportunity to swiftly secure patent protection for their designs in Taiwan to align with their patent strategy, portfolio management and product commercialisation timelines. Ultimately, this initiative facilitates rapid responses to counterfeit designs and assists design award winners and start-ups in obtaining patent rights for their innovative creations.