The “Industry Collaborative Patent Interview Pilot Program” has been announced in order to enable patent examiners to quickly grasp technical contents of invention patent applications for advanced technologies, improve examination efficiency and quality, and meet applicants’ needs of obtaining patents as soon as possible so as to facilitate their patent layout. The Taiwan Intellectual Property Office (TIPO) has recently revised the Pilot Program that had previously been implemented for a trial period of one year starting from November 1, 2021. The newly revised Pilot Program is scheduled to be implemented for a two-year trial period starting from January 3, 2023.

In the revised Pilot Program, the TIPO has amended the original requirements in point (3), and has further deleted the original stipulation in point (5) that an examination report will be issued within six months after the interview.

In the amendments to point (3), the TIPO clearly defines the requirements for interview participation and the regulations for video interviews. Interview participants are required to be technical experts, including inventors of the invention patent application, the applicant or other professionals employed by the applicant. When these technical experts cannot attend the interview in person at the TIPO, they must choose a non-public place to connect with the conference system provided by the TIPO and directly participate in the interview through their own video equipment. In other words, a lawyer, patent attorney or patent agent employed by the applicant is not required to participate in the interview, and technical experts as defined above must discuss the technical content of an invention patent application filed by the applicant directly with an examiner assigned by the TIPO.

Regarding the deleted stipulation, the TIPO states that since examiners may already understand the relevant technologies after an interview, the efficiency and quality of examination can be improved. Hence, there is no need for further regulations.

The current requirements of the revised Pilot Program effective on January 3, 2023 follow below:

1. Eligibility Requirements:

An applicant intending to request participation in the Pilot Program in the TIPO must note the following:

●an invention patent application filed in the TIPO is related to advanced technologies;

●a notification of entering substantive examination for the invention patent application has been issued by the TIPO; and

●no Examination Opinion or Decision of patent examination for the invention patent application has been issued by the TIPO.

2. Definition of Advanced Technologies:

The term “advanced technologies” refers to the fields of stem cell regenerative medicines, medical care informatics, Micro-LED display, quantum dot solar cells, neural networks, quantum informatics, quantum computers, 3nm semiconductor processes, packaging probe precisification, twisted bilayer graphene, third-generation semiconductors, artificial intelligence, Internet of Things, big data, blockchain, 3D printing, fifth-generation mobile communication technology, and other specific technologies to be determined by examiners on a case-by-case basis.

3. Implementation of the Pilot Program:

(1)Under any of the following circumstances, examiners shall arrange an interview ex officio:

I. The examiner preliminarily deems that an invention patent application is related to advanced technologies and contacts the applicant(s) of the invention patent application by telephone. An interview will be held if the applicant(s) would like to further explain the technical content of the invention patent application.

II. An applicant has submitted a request for the Industrial Collaborative Patent Interview for an invention patent application, and the examiner deems that the invention patent application complies with the requirements of the Pilot Program.

(2)When a request for the Industrial Collaborative Patent Interview for an invention patent application has been filed but the invention patent application is deemed ineligible, the examiner will contact the applicant of the invention patent application by telephone to inform the applicant of the fact that the invention patent application does not comply with the requirements of the Pilot Program.

(3)Experts in the field of an invention patent application, including inventors of the invention patent application, the applicant or other professionals employed by the applicant, shall attend the interview in person at a location designated by the TIPO to explain the technical content of the invention patent application. When these experts cannot attend the interview in person at the designated location, they must participate in the interview in a non-public place of their choice through their own video equipment. In other words, technical experts as defined above (i.e., not just a lawyer, patent attorney or patent agent) must participate in the interview in person or via video.

(4)The interview record shall include the date and location of the interview, names of participants, and technologies or matters related to the invention patent application for examination, but the record will not include information that the applicant has designated as commercially confidential or trade secrets.

(5)Matters not stipulated in the Pilot Program shall be handled in accordance with the Guidelines for Patent Interviews issued by the Intellectual Property Office of the Ministry of Economic Affairs.

The introduction video for the Pilot Program is available on the YouTube channel of the Intellectual Property Office.

https://www.youtube.com/watch?v=Is64XkGi3ss

(Summarized and translated from the News published on the TIPO’s website)

*Section Chief of International Patent Division at Tai E International Patent & Law Office