Taiwan is slowly rising to become one of the central IP hubs in Asia. Taiwan’s IP Office (TIPO) is accomplishing more and more achievements, rivaling CNIPA in many aspects, especially in patents. So, what are the changes coming to the patent system in Taiwan in recent years?
The Global Patent Search System of TIPO
In recent years, TIPO has consistently collaborated with international organizations to introduce foreign patent and non-patent databases, such as EPOQUE.Net, STN (primarily for prior art references in the chemical field), and Derwent Innovation (DI).
TIPO also worked closely with primary foreign patent offices, such as:
- The World Intellectual Property Organization (WIPO);
- The United States Patent and Trademark Office (USPTO);
- The European Patent Office (EPO);
- The China National Intellectual Property Administration (CNIPA);
- The Japan Patent Office (JPO);
- The Korean Intellectual Property Office (KIPO);
- The patent offices of Southeast Asian countries – a total of 105 patent offices.
TIPO’s connection to IP Offices around the world is the fundamental basis for the establishment of the Global Patent Search System (GPSS).
The scope and content of the Global Patent Search System
TIPO successfully established good connections with primary foreign patent offices in order for TIPO’s patent resources to be synchronized with those of international patent search systems.
The total number of patent references and patent pre-grant publications included in the Global Patent Search System has already increased by 40.39%, from 100,421,457 in 2020 to 140,982,505 by the end of 2021. In 2021, GPSS will have added 26,208,202 pages of image and text files.
GPSS offers several advantages to both local and foreign users by utilizing the services of local patent firms and research institutes to save or minimize their expenses in establishing private patent databases and removing barriers to cross-border patent searches.
GPSS was visited and used 2,130,315 times by local users from enterprises, patent law firms, universities, and research institutes in 2021.
In 2020, the average response time for each step or click using GPSS was 1.92 seconds, and in 2021, it was 1.85 seconds. TIPO’s satisfaction survey on the effectiveness of using GPSS reached 81.3%. According to a 2021 satisfaction questionnaire survey, the proportion of users in local industries reached 53.90%, with an overall satisfaction rate of 86%.
GPSS features and other functions
TIPO continues with electronic operations, including imaging and digitization operations for patent documents, to strengthen the functions and usability of GPSS. The digitization operation employs cutting-edge optical character recognition (OCR) technology to capture text parts in scanned image files and convert their structured text data into XML data format, allowing GPSS access and identification of specific paragraphs of uncovered patent documents and specific pages via the internet.
Users can also use GPSS to download complete versions of any patents and application publications filed with TIPO and foreign patent offices.
To comply with Taiwan’s Ministry of Economic Affairs’ (MOEA) net-zero carbon emissions policy, GPSS offers “Green Technology Categories” based on WIPO’s invention classifications of green categories, such as alternative energy, transportation, energy saving, waste management, agriculture and forestry, and administration, regulation, and design.
“Green Technology Categories” includes a one-click function for searching related green technologies as well as a number of reports and articles dealing with green technology-related research and trends to aid users’ research and accelerate the development of green technology-related inventions.
TIPO is now working to expand other useful GPSS functions. GPSS, for example, will be able to reveal all references cited during the examination stage(s) of the patents/application publications to be searched, as well as the relation chart of all references and the entire texts and particulars of the references cited. GPSS may also reveal the “patent family” for all uncovered patents and application publications.
TIPO makes use of cutting-edge technology to speed up patent examinations
Online assessments
In recent years, TIPO has begun to conduct online patent examinations for the “first stage” of examination of invention patent applications and utility model applications. Before the end of 2021, the online examination rate for invention patent applications and utility model applications in the first stage will have reached 100%.
TIPO also conducted online examination trials for design applications in 2021, and the online examination rate increased to 85% by the end of December 2021. TIPO will begin a full (100%) online examination of design applications in January 2022.
AI-assisted examination
Online examination will be implemented throughout the patent examination procedure in the near future, reducing administrative time and costs as well as the burden on examiners and administrative work. The digitized information of electronic files and examination process information may serve as a good foundation for future developments of cross-border electronic exchange or AI-assisted examination to improve examination quality and efficiency.
Through improved patent databases and online examinations, it is expected that online examinations for patent applications will reduce the time for prosecution and that applicants’ inventions and creations will be more competitive in markets.
TIPO increased the efficiency of patent examination
TIPO has spent a lot of money in recent years to provide more internal and external patent and non-patent search resources to patent examiners. At the same time, PSC (Patent Search Center – established by TIPO on March 15, 2012) assists TIPO in conducting prior art reference searches in order to proceed with substantive examinations and speed up the patent examination process. Acceleration of examinations, particularly substantive examinations for invention patent applications, is usually advantageous to applicants in order to promote industrial innovation and increase industrial competitiveness.
In the last three years, TIPO’s average completion period (ACP) of the first examination stage of invention patent applications has been comparable to that of the JPO and KIPO. However, the definition of ACP of substantive examination varies from country to country. According to the USPTO, for example, the ACP is calculated from the filing date to the mailing date of the Final Office Action or Notice of Allowance. The ACP is calculated for the EPO and CNIPA from the date of entry into substantive examination to the date of the Rejection Decision or Notice of Allowance. The ACP is calculated for TIPO, JPO, and KIPO from the date of requesting a substantive examination to the date of Rejection Decision or Notice of Allowance.
For more than 35 years, the author of this article has assisted domestic and foreign applicants seeking patent protection in Taiwan, China, and many other jurisdictions, so the author is in a position and capability to make some comparisons about the efficiency and quality of examinations conducted by primary patent offices around the world.
TIPO has not only significantly reduced its ACP of examination from 26 months in 2015 to 13.95 months in 2021, but has also significantly improved the formal and substantive examinations of invention patent applications.
The mechanism for industrial co-examination
TIPO recently conducted a trial run of an industrial co-examination mechanism. The purpose of such a mechanism is to invite competent and appropriate experts from research institutes, universities, engineering associations, and/or high-tech enterprises to provide proper technical opinions for the examiners’ reference in the event that the TIPO does not have suitable examiners with such technical backgrounds or capability or requires second opinions.
TIPO invited experts from 157 high-tech enterprises and public engineering associations to provide technical opinions on specific technical issues in 2021 to help with substantive examinations of 159,652 patent applications.
TIPO and PSC held patent search and patent portfolio skills competitions
TIPO and PSC held patent searches, analyses, and patent portfolio competitions in 2021 to encourage diverse industry analysis and patent portfolio skills. The competitions were co-organized by National Taiwan University, National Chung Hsing University, National Cheng Kung University, the IP Management & Promotion Administration Center in Taiwan (IMPACT), and the Taiwan Patent Attorneys Association. Individuals competed from 53 teams, including well-known domestic enterprises, universities, and academic research institutions.
All competition teams were instructed to conduct all patent searches and analyses via GPSS.
The goals of these competitions are to provide opportunities and channels for domestic enterprises, universities, and academic research institutions to discuss and exchange opinions and experiences in patent analyses, to build better patent portfolios, and to create more opportunities for close collaboration between industries and universities.
According to TIPO policy, PSC has already published industry patent analysis reports to the general public in 2020.
According to the records, 57% of the entities or individuals who requested industry patent analysis reports in 2019 came from patent and trademark firms, 12% from manufacturing enterprises, and 9% from research institutes.
25% of the entities or individuals who requested the 2020 industry patent analysis reports came from manufacturing enterprises, 17% from patent and trademark firms, and 17% from research institutes.
Of the entities or individuals who requested industry patent analysis reports for 2021, 32% were manufacturing enterprises, 23% were research institutes, and 17% were patent and trademark firms.
According to the data, an increasing number of manufacturing companies believe that the PSC’s industry patent analysis reports are useful in implementing appropriate patent analysis and portfolio management in order to promote business in the markets.
You can see a list of Taiwan IP Firms here.
(From the article by Russell Horng, examiner of Taiwan Judicial Yuan posted in Asia IP)