萬國法律事務所

Follow up and Correction to “Korea-Taiwan Patent Prosecution Highway is on The Road” published on our IP Blog no. 004, July.

Wade Lin
Patent Attorney
Patent Deputy Manager
M.S. in Molecular and Cellular Biology
wade.lin@taiwanlaw.com

In our previous article in July discussing about the strategy of using Korean-Taiwan PPH system, we suggested applicant who is willing to use Korean-Taiwan PPH system shall file the patent application in Korea first so that the Korean IP Office can be the office of earlier examination (OEE). The suggestion needs to be further clarified. We further noted that the PPH system (PPH MOTTAINAI) between Korean and Taiwan allows the applicant to request accelerated examination for its Taiwanese counterpart as long as the Korean corresponding application thereof is granted. It doesn’t matter whether or not the Korean corresponding application was filed first. The PPH systems between Japan and Taiwan as well as Spain and Taiwan are also a PPH MOTTAINAI system. Our suggestion in our July article, however, is true for the PPH system between the United States and Taiwan. In that system, an application, whose claims have been granted in the office of first filing (OFF) can undergo an accelerated examination in the office of second filing (OSF). If the corresponding application in the OSF is examined faster than the application in OFF, the PPH cannot be requested in the OFF. In other words, if the invention pertaining to a scientific field that used to be examined faster in US, the applicant is recommended to file the patent application in the United States first to let the USPTO be the office of first filing (OFF).