Author : Russell Horng
The content was published in the first issue of the “Asia IP INFORMED ANALYSIS” on MAY 2022 VOL 14 ISSUE 5.
目錄
I. Taiwan Intellectual Property Office recently completed the following projects:
II. Taiwan Patent Search Center
III. TIPO’s Global Patent Search System
IV. TIPO Utilizes Modern Technologies to Facilitate Patent Examinations
V. TIPO Has Sped up Patent Examination Efficiency in Recent Years
VI. Industrial Co-examination Mechanism
VII. TIPO and PSC Held Competitions for Patent Search and Patent Portfolio
VIII. PSC Completed Industry Patent Analysis Reports
I. Taiwan Intellectual Property Office recently completed the following projects:
Taiwan Intellectual Property Office (“TIPO” for short) completed the following projects before the end of 2021:
(1) Project to improve Taiwan patent search application environment; and
(2) Project to improve patent portfolio and capability for industry analyses.
This article will try to summarize the background and outcomes of the above projects.
II. Taiwan Patent Search Center
TIPO established “Patent Search Center (PSC for short)” on March 15, 2012 and the Director General of TIPO acts as the president of PSC. At the beginning, PSC recruited quite a few experienced patent examiners as its experts to proceed with prior art searches for the TIPO and the missions of PSC can be separated into the following stages:
(1) First Stage (from 2012 to 2014):
Missions: (A) Conducting prior art searches to support TIPO’s patent examinations; and
(B) Establishing PSC’s internal patent management system (first phase).
(2) Second Stage (from 2015 to 2016):
Missions: (A) Conducting prior art searches to support TIPO’s patent examinations;
(B) Establishing PSC’s internal patent management system (second phase); and
(C) Providing patent search services for outside clients (trial operation stage).
(3) Third Stage (from 2017 till now):
Missions: (A) Conducting prior art searches to support TIPO’s patent examinations;
(B) Improving PSC’s patent knowledge management platform (final phase);
(C) Providing patent search services for outside clients (formal operation stage);
(D) Acting as one of the professional organizations in Taiwan designated by Judicial Yuan to conduct patent infringement evaluations; and
(E) Providing industry patent analyses for the society.
PSC had accomplished the following mission targets in the period from 2018 to 2021 (see Table 1):
| Years | Mission Tasks |
| 2018 | 1. Number of patent search reports for TIPO: 9,350 |
| 2. Number of searches using TIPO’s databases: 10,084,885 | |
| 3. Number of industry patent analyses: 2 | |
| 2019 | 1. Number of patent search reports for TIPO: 10,058 |
| 2. Number of searches using TIPO’s databases: 10,844,682 | |
| 3. Number of industry patent analyses: 2 | |
| 2020 | 1. Number of patent search reports for TIPO: 9,569 |
| 2. Number of searches using TIPO’s databases: 10,373,247 | |
| 3. Number of industry patent analyses: 2 | |
| 2021 | 1. Number of patent search reports for TIPO: 9,790 |
| 2. Number of searches using TIPO’s databases: 12,812,556 | |
| 3. Number of industry patent analyses: 2 |
Table 1
III. TIPO’s Global Patent Search System
- Establishment of Global Patent Search System
TIPO continuously cooperated with international organizations in recent years so as to introduce foreign patent and non-patent databases, such as EPOQUE.Net, STN (mainly for prior art references in chemical field), Derwent Innovation (DI). TIPO also closely cooperated with primary foreign patent offices, such as World Intellectual Property Organization (WIPO), United States Patent and Trademark Office (USPTO), European Patent Office (EPO), China National Intellectual Property Administration (CNIPA), Japan Patent Office (JPO), Korean Intellectual Property Office (KIPO), and the patent offices of southeast Asian countries, totally 105 patent offices, and thus successfully established a Global Patent Search System (GPSS).
- The contents and scale of GPSS
TIPO successfully made good connections with primary foreign patent offices so that the TIPO’s patent resources may synchronize with those of international patent search systems.
The total number of patent references and patent pre-grant publications included in GPSS has already increased from 100,421,457 in 2020 to “140,982,505” till the end of 2022, with a growth rate of 40.39%. GPSS also increased 26,208,202 pages of Image files and text files in 2021.
GPSS provides several benefits to the local users and foreign clients through the services of local patent firms and research institutes to save or minimize their expenses to establish private patent databases and remove obstacles to cross-border patent searches.
In 2021, GPSS was visited and used by local users from enterprises, patent law firms, universities and research institutes for 2,130,315 times.
The average response time for each step or click using the GPSS was 1.92 seconds in 2020 and 1.85 seconds in 2021. The satisfaction survey made by TIPO regarding the efficiency of using GPSS has reached 81.3%. According to a satisfaction questionnaire survey in 2021, the proportion of users in local industries reached 53.90%, and the overall satisfaction rate reached 86%.
- The features and other functions of GPSS
To reinforce the functions and usability of GPSS, TIPO proceed with electronic operations including imaging and digitization operations for patent documents. The digitization operation uses the latest Optical Character Recognition (OCR) technology to capture the text parts in the scanned image files and convert their structured text data into XML data format so as to facilitate the access of GPSS and the identification of certain paragraphs of uncovered patent documents and specific pages through internet.
Users may also download complete version of any patents/application publications filed with TIPO and foreign patent offices through GPSS without service fee.
To comply with the Net Zero Carbon Emissions policy of the Ministry of Economic Affairs (MOEA) of Taiwan, GPSS particularly provides “Green Technology Categories” following WIPO’s invention classifications of green catalog including alternative energy, transportation, energy saving, waste management, agriculture & forestry, and administration, regulation & design. “Green Technology Categories” provide one-click function for searching related green technologies and also include a number of reports and articles dealing with green technology related research and trend to facilitate users’ researches and accelerate the development of inventions regarding green technologies.
The TIPO now endeavors to increase other useful functions for GPSS. For example, GPSS will be able to disclose all references cited during examination stage(s) of the patents/application publications to be searched, the relation chart of all references, and the whole texts and particulars of the references cited. GPSS may also disclose “patent family” for all uncovered patents/application publications.
IV. TIPO Utilizes Modern Technologies to Facilitate Patent Examinations
- Online examinations
TIPO started to proceed with Online Patent Examinations for the “first stage” of examination of “invention” patent applications and “utility model” applications in recent years. The online examinations rate for “invention” patent applications and “utility model” applications in the first stage has reached 100% before the end of 2021.
TIPO also made trial implementations of online examination for “design” applications in 2021 and the online examination rate has been up to 85% before the end of December 2021 (see Figure 1). TIPO has proceeded with full (100%) online examination for “design” applications from January 2022.
2. AI-assisted examination
In the near future, online examination will be implemented through whole examination procedure of patent applications so that administrative time and costs as well as burden of examiners and administrative work can be significantly reduced. The digitized information of electronic files and the information of the examination process may serve as good basis for future developments of cross-border electronic exchange or AI-assisted examination so as to improve examination quality and efficiency.
It is certainly expected that the online examinations for patent applications will reduce the time for prosecution and the applicants’ inventions/creations may have better competitiveness in markets through the improved patent databases and the online examinations.
V. TIPO Has Sped up Patent Examination Efficiency in Recent Years
In recent years, TIPO has invested a lot of information funds to provide the patent examiners with more internal and external patent and non-patent search resources. At the same time, PSC assists TIPO to carry out the search of prior art references to proceed with substantive examinations so as to accelerate the procedure of patent examinations. Acceleration of examinations, particularly the substantive examinations for invention patent applications, is normally beneficial to applicants to promote industrial innovations and enhance industrial competitiveness.
As can be seen from Figure 2 and Table 2, TIPO’s average completion period (ACP) of the first examination stage of invention patent applications is comparable to that of JPO and KIPO in the past three years. It is noted, however, that the definition of ACP of substantive examination is not consistent in different countries. For instance, according to USPTO, the ACP is calculated from the actual filing date to the mailing date of Final Office Action or Notice of Allowance. For EPO and CNIPA, the ACP is calculated from the date of entering into substantive examination to date of Rejection Decision or Notice of Allowance. For TIPO, JPO and KIPO, the ACP is calculated from the date of requesting a substantive examination to the date of Rejection Decision or Notice of Allowance.
Average Completion Period (ACP) of Examinations
| 2011 | 2012 | 2013 | 2014 | 2015 | 2016 | 2017 | 2018 | 2019 | 2020 | 2021 | |
| USPTO | 33.8 | 31.7 | 28.6 | 27.0 | 26.3 | 25.6 | 24.2 | 21.7 | 21.8 | 23.3 | 〜 |
| EPO | 36.7 | 36.2 | 23.0 | 22.8 | 26.9 | 26.5 | 24.9 | 31.8 | 26.1 | 23.7 | 〜 |
| JPO | 34.0 | 29.6 | 23.4 | 15.2 | 15.0 | 14.6 | 14.1 | 14.1 | 14.3 | 14.8 | 〜 |
| KIPO | 22.8 | 21.6 | 19.1 | 16.7 | 16.1 | 16.2 | 15.9 | 15.8 | 15.6 | 15.8 | 〜 |
| CNIPA | 22.9 | 22.6 | 22.2 | 21.8 | 21.9 | 22.0 | 22.0 | 22.5 | 22.2 | 20 | 〜 |
| TIPO | 45.9 | 46.1 | 41.3 | 33.4 | 26.0 | 19.8 | 15.5 | 14.0 | 13.6 | 13.9 | 13.95 |
Table 2
The author of this article has actual experiences in assisting domestic and foreign applicants to seek patent protections in Taiwan, China and many other countries for more than 35 years so that the author may have position and capability to made some comparisons about the efficiency and quality of examinations made by primary patent offices in the world, particularly the Patent Offices and Intellectual Property Offices listed in the above Table 2.
According to the author’s observations in the past ten years, TIPO has not only significantly shortened its ACP of examination from 26 months in 2015 to 13.95 months in 2021 but also well improved the qualities of formal and substantive examinations of invention patent applications.
VI. Industrial Co-examination Mechanism
TIPO recently made a trial implementation of an industrial co-examination mechanism. The purpose of such mechanism is to invite competent and appropriate experts from research institutes, universities, engineering associations and/or high-tech enterprises, in particular technical fields to provide proper technical opinions for the examiners’ reference in case the TIPO does not have suitable examiners with such technical backgrounds or capability or needs second opinions.
In 2021, TIPO invited a number of experts from 157 high-tech enterprises and public engineering associations to provide technical opinions directed to specific technical issues to facilitate substantive examinations for 159,652 patent applications.
VII. TIPO and PSC Held Competitions for Patent Search and Patent Portfolio
In order to stimulate diversified industry analysis and patent portfolio skills, TIPO and PSC held competitions for patent searches, analyses and patent portfolio in 2021. National Taiwan University, National Chung Hsing University, National Cheng Kung University, IP Management & Promotion Administration Center at Taiwan (IMPACT), and Taiwan Patent Attorneys Association acted as co-organizers for competitions. The individuals who attended the competitions came from 53 teams, such as well-known domestic enterprises, universities and academic research institutions.
All competition teams were requested to carry out all patent searches and analyses by using GPSS.
The purposes of such 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, build better patent portfolios, and create more opportunities of close cooperation between industries and universities.
VIII. PSC Completed Industry Patent Analysis Reports
PSC carried out two Industry Patent Analysis Reports for each year from 2018 to 2021. The PSC’s reports are shown in the following Table 3:
| Year | Topics of PSC’s Industry Patent Analysis Reports | |
| 2018 | Patent analysis and portfolio for smart machine tools with improved cutting accuracy. | Patent analysis and portfolio for visual industrial manipulators (robotic arms). |
| 2019 | Patent analysis for smart medical treatment. | Patent analysis for smart diagnosis and treatment. |
| 2020 | Patent analysis and portfolio for advanced printed circuit boards. | Patent analysis and portfolio for 5G small base stations. |
| 2021 | Patent analysis and portfolio for body structure of battery electric vehicles. | Patent analysis and portfolio for new horizons for telemedicine patents & 5G application scenarios and service modes. |
Table 3
The Industry Patent Analysis Reports have already been published to the general public by PSC in 2020 according to the policy of TIPO.
According to the records, the entities or individuals who requested the Industry Patent Analysis Reports of the 2019 year, 57% came from patent and trademark firms, 12% came from manufacturing enterprises, and 9% came from research institutes.
The entities or individuals who requested the Industry Patent Analysis Reports of the 2020 year, 25% came from manufacturing enterprises, 17% came from patent and trademark firms, and 17% came from research institutes.
The entities or individuals who requested the Industry Patent Analysis Reports of the 2021 year, 32% came from manufacturing enterprises, 23% came from research institutes, and 17% came from patent and trademark firms.
The records reveal that more and more manufacturing enterprises believe that the PSC’s Industry Patent Analysis Reports are valuable to them to implement appropriate patent analysis and portfolio so as to promote business in the markets.