Unlike many other countries, Taiwan invention applications are subject to two examinations, namely examination and re-examination, before entering appeal stage for seeking remedies in response to a dissatisfactory result at TIPO.

Some applicants may be misled by the high grant rate for invention patent application in Taiwan, which is around 75% for the years span from 2017 to 2021 and ignore the pitfalls of entering appeal and potential trial stage.  According to the recent statistics of TIPO, the success rate of revoking an invention patent examination result at the appeal stage is only around 2.3% for the years between 2019 and 2023.  In the year 2022, no invention patent examination result was revoked at the appeal stage.  The low revoking rate is contributed to because claim amendments are not permitted at the appeal stage. The success rate of revoking an invention patent examination result at the trial stage is higher at around 17.02% in the past five years. However, it is a pre-requisite to complete the appeal stage before commencing the trial stage.  Therefore, the applicant needs to spend considerable time and money before entering the trial stage.  Additionally, an applicant cannot file division applications to branch the prosecution of the patent application after TIPO issues rejection in re-examination stage.  This means an invention application is headed to a doomed end with only 2% of surviving rate.

There is a proposal to amend the Patent Act in Taiwan to reform the rejection review system by abolishing the re-examination and appeal for invention applications.  According to this proposal, if an applicant is not satisfied with the results at the examination stage, the applicant can file a request to a trial board consisting of three experienced patent examiners before filing a suit to the IP and commercial count.  With this amendment, the remedy system is more streamlined and replaces the re-examination and appeal with the newly added trial board.

As there is a lack of manpower in TIPO, a trial board consisting of three experienced patent examiners is a serious burden for them. Therefore the proposal is not yet implemented.  To reduce the cases at the appeal stage and reduce workload in re-examination for invention application, TIPO has announced an Accelerated Examination Program for Re-examination (AEPRe)  effective on Sept. 1, 2024.

According to this program, if the applicant files a request for re-examination of the rejected invention application and puts the invention application in allowable manner, for example, re-writing a non-rejected dependent claim into independent claim and overcoming the objection, TIPO will provide the examination result at the re-examination stage within 6 months.  Based on past statistics, the pendency time for the first office action at the re-examination stage is around ten months and the Accelerated Examination Program needs to be submitted before TIPO issuing the first office action.  Therefore, the applicant needs to consider this choice promptly.

Even though lots of outcomes need to be surveyed to evaluate the impact of the accelerated program, we expect the following trends. With this short time frame and the reference to previous examination result, we  expect high grant rate through this accelerated program.  Additionally, as the examiner assigned to re-examination has more time to examine applications without requesting Accelerated Examination Program, this can further reduce the time for the first office action and improve examination quality.

For invention application with a broad claim scope that faces rejection at the examination stage, the applicant may consider utilizing the Accelerated Examination Program to get the patent granted with allowable claims and file a division application to seek the claim scope for the rejected claims.  The division application will then be examined at the re-examination stage rather then at the examination stage.  The applicant still needs to prudently handle the division application to avoid premature rejection. If the division application is rejected at the re-examination stage, the application cannot utilize AEPRe and can only head to the doomed appeal process.