Permanent Patent Prosecution Highway Program Launched between US and Taiwan

Happy New Year to our readers! Here’s some foreign filing news to kick off 2013…

For many applicants, the Patent Prosecution Highway (PPH) is an invaluable resource for expediting and reducing the costs of foreign applications. The PPH is a work-sharing agreement between 2 patent offices wherein a finding by one patent office that at least one claim in the application is patentable will allow the applicant to fast-track the corresponding application in the other patent office.

On December 21, 2012, the United States Patent and Trademark Office (USPTO) announced the launch of a permanent PPH program with the Taiwan Intellectual Property Office (TIPO), building upon the pilot PPH program that had commenced on September 1, 2011. With more US applicants interested in seeking patent protection in Taiwan, this PPH program will surely be a welcome addition to the 30+ PPH agreements the USPTO already has in place.

While we’re on the topic of Taiwan, a request we often receive from clients is to file their PCT application into Taiwan at the national stage. Unfortunately, Taiwan is not a member of the Patent Cooperation Treaty and the PCT application cannot be filed there at the 30/31-month deadline. Even worse, by the time the 30/31-month filing deadline rolls around, the deadline for filing into Taiwan has long passed. Taiwan, although not a party to the Paris Convention, does recognize priority claims from contracting members. That means that an applicant must file into Taiwan within 12 months from the earliest priority date if they wish to obtain patent protection there.

Did you know that inovia recently launched a Paris Convention filing service, allowing you to file directly into 17 countries, including Taiwan? Register for a free account to get an instant quote for direct Paris Convention filings.


Related insights