Q1 How many types of patents exist in ROC?

There are three types of patents, including invention, utility model, and design patent.

Q2 What languages may I use for filing a patent application?

The application form must be written in traditional Chinese characters. The description, claim(s) and drawing(s) can be filed in Arabic, English, French, German, Japanese, Korean, Portuguese, Russian and Spanish other than Chinese.

A Chinese translation for the said documents must be submitted within a specified time period. Otherwise the patent application shall be dismissed.

Q3 When should I provide a Chinese translation if I filed in a language other than Chinese? Can I make a request for an extension of the time period?

The Chinese translations of those foreign language documents must be provided within 4 months for invention and design patent application, and 2 months for utility model patent application from the date of submitting the foreign language documents.

Prior to the expiration of the time period, the applicant may make a request for an extension. The total time period for submitting the Chinese translations may up to 6 months from the date of submitting the foreign language documents.

Q4 How can I claim a priority right based on the first application filed in a country other than ROC?

The citizens or residents of the member of the World Trade Organization(WTO) may enjoy the benefits of a priority right based on the first application filed in any WTO member if the ROC patent application is filed no later than 12 months after filing the first application. With respect to a design application, the time period is 6 months from the filing date of the first application.

  1. When you claim a priority, you have to do the following:
    To specify the name of the country where the first application was filed, the filing date and the application number on the Request form, and
  2. To submit the priority document within 16 months from the filing date of the first application or the earliest filing date when multiple priority rights are claimed. (Please note that with respect to a design application, the time period should be 10 months from the earliest priority date)

Q5 What can I do if I didn’t claim priority or the priority claimed was incomplete at the time of filing patent application?

Where an applicant unintentionally fails to claim priority at the time of filing, or where the priority claim is deemed not to have been made due to not specify the filing date of the first patent application or the name of the country (or WTO member), he/she may, within 16 months after the earliest priority date, apply for reinstatement of priority claim, pay the required fee (NT$2,000), and undertake the actions that should have been done.

Please note that with respect to a design application, the time period to apply for reinstatement of priority claim should be 10 months from the earliest priority date.

Q6 May I amend my patent application after filing it?

Yes. You can amend your patent application during the examination. However, if TIPO has issued an office action, you can only make amendment(s) within the time period specified by TIPO. Please note that any amendment shall not extend beyond the scope of content disclosed in the description, claim(s), or drawing(s) as filed.

  1. In the case of a patent application for invention, TIPO may, as it deems necessary, issue a final notice after having issued an office action. The applicant who would like to amend claim(s) after a final notice has been issued shall only make the following amendments within the time period specified therein:
    to delete claim(s);
  2. to narrow down the scope of claim(s);
  3. to correct errors; or
  4. to clarify ambiguous statement(s).

Q7 May I request for division of a patent application?

Yes. The divisional patent application shall be accorded the same filing date of the original application.
An applicant shall file a divisional patent application

within any of the following time periods:

  1. before a reexamination decision on the original patent application is rendered;or
  2. within three (3) months after the date on which an approval decision for the original patent application or reexamination is served.

Q8 What are excluded from patentability for invention patents?

  1. An invention patent shall not be granted in respect of any of the following:
    animals, plants, and essential biological processes for the production of animals or plants, except for processes for producing microorganisms;
  2. diagnostic, therapeutic or surgical methods for the treatment of humans or animals;
  3. Inventions contrary to public order or morality.

Q9 What is a “grace period”?

A grace period is a period of time before the date of filing a patent application during which certain kinds of disclosure of the creation would be excluded when determining the novelty and inventive step of the creation. The duration is 12 months for invention or utility model, and 6 months for design, calculated from the date of earliest disclosure to the filing date.

The provisions regarding the grace period would apply when disclosures are made either intentionally or unintentionally by an applicant. Therefore, the content of the invention, utility model or design was disclosed in a printed publication, publicly exploited or publicly known prior to the filing of application, and patent application is filed within twelve(12)/six(6) months after the date of the disclosure, were all covered by grace period.

An applicant claiming for a grace period should state each fact and the relevant date of the disclosure and provide document(s) of proof.

Q10 Is there an obligation of an employee inventor by law to offer his/her invention to the employer? If an employee is obliged to offer an invention to the employer, what obligation has the employer?

Other than those specified in Article 7 & 8 of the Patent Act in Taiwan, basically employment contracts or agreements are considered guiding principles to employee/employer patent filing issues.   So the situation may vary in different companies/entities.

Article 7 Invention made in the performance of duties

Where an invention, a utility model or a design is made by an employee in the course of performing his/her duties, the right to apply for a patent and the patent right thereof shall be vested in his/her employer and the employer shall pay the employee reasonable remuneration; where there is an agreement providing otherwise, such agreement shall prevail.

Article 8 Invention irrelevant to the performance of duties

Where an invention, utility model or design made by an employee has no connection to the course of performing his/her duties, the right to apply for a patent and the patent right for such invention, utility model or design shall be vested in the employee. However, if such invention, utility model or design is made through the utilization of the employer’s resources or experiences, the employer may, after paying the employee a reasonable remuneration, exploit the invention, utility model or design concerned in the enterprise.

Upon completion of an invention, utility model or design which has no connection to the course of an employee’s performing his/her duties, the employee shall give the employer a written notice regarding such event, and shall also inform the employer of the creative process, if necessary.

If the employer fails to raise any objection to the employee within six (6) months after receiving the employee’s written notice under the preceding paragraph, the employer shall not claim that such invention, utility model or design was made by the said employee in the course of performing his/her duties.

Q11 How long does patent protection last?

An invention patent is granted for a term which begins with the publication date of the grant and ends 20 years from the filing date of the patent application.

A utility model patent is granted for a term which begins with the publication date of the grant and ends 10 years from the filing date of the patent application.

A design patent is granted for a term which begins with the publication date of the grant and ends 15 years from the filing date of the patent application.

Q12 Is there any restriction for a post-grant amendment?

Firstly, Article 67 of the Patent Act provides:

The patentee filing a request for amending the description, claim(s) or drawing(s) of a granted invention patent shall only conduct the following:

  1. to delete claim(s);
  2. to narrow down the scope of claim(s);
  3. to correct errors or translation errors; and
  4. to clarify ambiguous statement(s).

Except for correction of translation errors, a post-grant amendment shall not extend beyond the scope of content disclosed in the description, claim(s), or drawing(s) as filed.

For a patent application for invention filed by submitting the description, claim(s), and drawing(s) in a foreign language pursuant to Paragraph 3 of Article25, the correction of translation errors shall not extend beyond the scope of content disclosed in the original foreign language documents as filed.

A post-grant amendment shall not substantially enlarge or alter the scope of the claim(s) as issued.

Q13 What is a utility model patent?

A utility model is a creation of technical ideas relating to the shape or structure of an article or combination of articles which occupies certain space, utilizing the laws of nature. Manufacturing method, processing method, using method, chemical substance or compound without concrete shape or structure does not meet the definition of utility model.

Q14 May I obtain both an invention patent right and a utility model patent right for the same creation?

If you file a patent application for invention and a patent application for utility model for the same creation on the same date, before an approval decision on the patent application for invention is rendered, TIPO will require you to make a selection to avoid double patenting. Once the invention patent application is selected, the utility model patent right will extinguish on the publication date of the invention patent.

To enjoy this continuous protection, you must declare the existence of the other application at the time of filing in both applications, and must maintain the validity of the utility model patent until the publication date of the invention patent.

Q15 What are excluded from patentability for utility model patents?

A utility model patent shall not be granted if it is contrary to public order or morality.

Q16 Do I need to file a request for examination after I have submitted a utility model patent application?

TIPO adopts formality examination instead of substantive examination for a utility model patent. After a utility model patent application is accepted, TIPO will take the initiative in conducting the formality examination automatically.

Q17 What is a Technical Evaluation Report for a utility model?

Owing to patentability is not substantively examined for a utility model patent application, there is considerable unstableness and uncertainty with respect to validity of a utility model patent. If a patentee inappropriately exercises such uncertain right, the patent rights may possibly be abused, which may hinder a third person’s research and development. Therefore, anyone is allowed to request TIPO for a Technical Evaluation Report in order to clarify if the said utility model patent complies with the patentability. However, the Technical Evaluation Report is merely a reference for exercising the rights to utility model patent or for technical reference. Anyone having a cause as to that a utility model patent should not be approved has to institute an invalidation action in order to revoke such utility model patent.

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