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A new positive patent examination program for startups

by Betty Chen

Lack of funds and tangible assets is a common problem for startups, and one which often proves fatal. To address this issue, Taiwan began promoting intangible asset financing starting on 1 January 2021. As part of this program, the Taiwan Intellectual Property Office (TIPO) has announced a new patent examination program, the Positive Examination for Startup Application Program (“Startup Program”), which may prove to be a significant development for Taiwan’s startup ecosystem.

Key Features

The proposed Startup Program has two main features which distinguish it from existing patent examination programs.

First, applicants will now have a right to prioritized examination. Under the current patent examination program, it usually takes 12 to 18 months to complete the examination process for an invention patent application. Under the new system, TIPO expects that applications filed by startups will be substantively examined within one month. Applicants can therefore expect to receive a result from the examiner a month after filing a request under the Startup Program.

Second, the new program includes a “Positive Interview” section, which comes into play if the patent application is rejected. According to TIPO, the Positive Interview provides an opportunity for applicants to have a face-to-face interview with patent examiners, which will allow applicants and their patent attorneys to gain a clearer understanding of any flaws or shortcomings in their applications. More importantly, patent examiners will provide concrete suggestions for the application during the interview. This minimizes the possibility of the application being rejected, thereby speeding up the process and indirectly lowering the cost for applicants. It should be noted that the Positive Interview is only intended for the purpose of assisting startups in the patent application process. While the examiner’s advice will be useful as guidance for the applicants, there is no requirement that the applicant follow the advice provided, and the applicant may instead amend the application as they wish.

Using the two key features mentioned above, the Startups Program will shorten the time required for a patent application to only 4 months. By contrast, applicants filing an application under the current system usually spend 18 months waiting for the patent to be granted, and if there is any rejection during the examination process, it may take up to three years to complete the application process. The expedited process under the Startups Program can strengthen startups’ financial status by allowing them to quickly accumulate IP assets which can be used to obtain loans or investment.

Who can apply and how?

While the Startup Program is aimed at providing support for startups, there is no specific  nationality requirement, and the program is not limited to local companies. “Startup” is defined here as any company that has been established for less than 5 years, and for a foreign company, its set-up date will be based on the national law of the company’s jurisdiction.

After filing patent applications and requests for substantive examination, applicants will generally receive a notification from TIPO within 30 days. Those who intend to apply through the Startup Program should submit an electronic application specifically for the program, after the notification but before receiving the first examination result.

Conclusion

There will be a trial run for this Startup Program in January 2021, under which TIPO will review 30 applications according to the new system. The program is widely anticipated, and is expected to make Taiwan a competitive choice for startups seeking to file their first patent applications.

For more information regarding patents in Taiwan please contact Peter Dernbach at pdernbach@winklerpartners.com and Betty Chen at betty@winklerpartners.com.

 

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