Patents

Introduction

Taiwan's Patent Act [http://www.tipo.gov.tw/eng/laws/patlaw-e.asp], originally drafted in 1944, has undergone many revisions in response to demands for greater patent protection as Taiwan's economic model has shifted from agriculture and basic manufacturing to high tech industrial production, prompting major revisions in 1979 and 1986. In the mid-1990s, Taiwan began forming bilateral patent recognition agreements with key trading partners. After joining the WTO in 2002, Taiwan agreed to comply with the terms of the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPs). To simplify filing procedures, Taiwan amended its Patent Act in 2003, taking effect July 1, 2004.

Patent applications are handled by the Taiwan Intellectual Property Office [http://www.tipo.gov.tw] under the Ministry of Finance in Taiwan. TIPO's other key roles include advocating rigorous IPR legislation, providing related training to Taiwan's judiciary, and improving the efficiency of the patent examination system.

Under Taiwan's Patent Act, patent protection is available for invention patents, design patents, and utility models. An invention patent has a term of twenty years; a design patent has a term of twelve years; and the utility model has a term of ten years.  Protection for patents may be removed if the patent owner fails to pay administrative fees or renounces the patent.

Applications for invention and utility model patents are reviewed with reference to the criteria outlined in the Patent Act. In general, utility models must demonstrate an improvement to or enhancement of the features of an existing invention. Both inventions and utility models must be "industrially applicable" as stated in the Patent Act.

Taiwan's Patent Act defines a design as "any creation made in respect to the shape, pattern, color, or combination thereof of any article."  Visual distinction is integral to any design patent. And like invention and utility models, design patents must also be industrially applicable.  Items not eligible for design patents include an article in which the shape is solely dictated by its function, works of fine art, integrated circuit and/or electronic circuit designs, articles that are contrary to public order or health, and designs that are similar or identical to a political party flag, national flag, portraits of Sun Yat Sen, military flags, and official government seals, emblems and medals.

Inventions, utility models, and designs that have been published or put into public use prior to filing a patent application in Taiwan are ineligible for patenting unless one of the following conditions applies:
• the invention/utility model is the result of research or an experiment;
• the invention/utility model had been exhibited at a government-sponsored exhibition; or
• the invention/utility model had been disclosed in an occasion not intended by the patent applicant.

Also, the following cannot be patented in Taiwan:
• animals, plants, and essentially biological processes for production of animals or plants, except the processes for producing microorganisms;
• diagnostic, therapeutic, or surgical operation methods for the treatment of humans or animals;
• an invention that is contrary to public order, morality, or public health.

When deciding whether to register a patent in Taiwan, companies should keep in mind the following:
• First filing principle: Regardless of the priority of an invention, Taiwan considers patent applications in the order in which they are filed.
• Nationals of WTO-member countries may claim priority registration if an application for the same invention is filed in Taiwan within twelve months of the original filing date in a WTO member country.
• All applications by those with a WTO or treaty-based claim to priority registration must be filed within twelve months of the original filing date as stated above.
• Patent applicants that do not have a residence or business office in Taiwan must appoint an agent to submit patent applications and handle all patent-related matters on their behalf. A patent agent must be certified in Taiwan.


Patent Registration Process

The following information provides an overview of the process and requirements for making a patent application in Taiwan. However, it should be used only as a general guide to the patent application process. Because patent applications can be complicated, applicants are highly encouraged to consult a Taiwan-based law firm specializing in patent registration before filing an patent application. Furthermore, the Intellectual Property Office (IPO) under the Ministry of Finance has an excellent FAQ on patent registration in Taiwan [http://www.tipo.gov.tw/eng/howto/procedures-p.asp], which should be reviewed before beginning the application process.

Step 1: Priority Claim Determination

A person who has filed an application for an invention or utility model patent in any country that is a member of the WTO may, within twelve months of the original filing, file subsequent patent applications in other countries claiming the filing date of the original application. The grace period for design patents in Taiwan is six months. Priority filing dates allow the inventor to avoid the possibility that a patent in one country could be granted to someone else in a second country. They also prevent disclosure in one country from affecting an invention's patentability in another country. If priority claims do not apply, patent protection in Taiwan is generally based on the "first to file" principle.

Step 2: Prepare the Required Documentation

Taiwan patent applications require the following documentation:

1. Specification, claims and drawings;
2. Applicant/inventor(s) information, including name, address and nationality;
3. Priority filing information including country, filing date and filing number, if priority is to be claimed;
4. An executed Assignment signed by the inventors if the inventors are not applicants;
5. Power of Attorney signed by the representative of the applicant;
6. Certified Copy of Priority Document, if priority is to be claimed.

Please note that the documents/information 1, 2 & 3 must be filed concurrently with initial application. Documents 4 and 5 can be submitted after initial filing, but must be submitted within six months of initial application filing date. The Certified Copy of Priority Document must be submitted within three months of filing date. Failure to do so will result in the claimed priority being invalidated.

The specification must also provide the following:

    * Title
    * Description
    * Abstract of the invention
    * Scope of claims

Design patent applications require drawings or figures in addition to a description of the design. Drawings and descriptions for all patent applications must be sufficiently clear such that ordinarily skilled persons in the relevant field understand the contents and use of the invention or design.

Step 3: Submit Application

Patents are filed with the Taiwan Intellectual Property Office (TIPO) in Taipei.  Note that if an applicant does not reside in or have a business office in Taiwan, a licensed patent agent must file the application on his or her behalf.  Also, if claiming priority based on a patent application in a foreign country, the applicant must submit documents issued by the government of that country as evidence of the foreign application.

Step 4: Examination

Once the application is submitted, TIPO will conduct an examination to ensure it meets the statutory filing requirements.  If approved (there is no cause for rejection), patents for utility models and designs will be issued. Applications for invention patents that meet the required criteria will be forwarded for substantive examination upon the request of the applicant. Please note that applicants must file a request for substantive examination within three years of the filing date. [http://www.tipo.gov.tw/patent/table/apply_930701/13%B9%EA%C5%E9%BCf%ACd%A5%D3%BD%D0%AE%D1.doc]

Step 5: Publication (Inventions)

If TIPO determines that the application meets statutory requirements, it will "lay open" the patent application eighteen months after the filing or priority date by publishing it in the Patent Gazette.

Step 6: Examination (Inventions)

Applicants for inventions must request a substantive examination within three years from the date of filing. If a substantive examination has not been requested within the three-year period, the application will be automatically cancelled. Applicants may be required to perform relevant experiments, prepare additional models or samples, or appear for an in-person interview as deemed necessary.

Step 7: Granting of Patent Rights

If TIPO concludes that the application conforms to the Patent Act, it will issue the patent and publish the claims and drawings relevant to the application.  The issuance fee and first year annuity [http://www.tipo.gov.tw/eng/howto/fee-p.asp] for the patent must be paid by this time.  Once the patent is granted, any person may apply for access to the written decision of the examination, specifications, drawings, and related application materials. If a patent application is denied, TIPO must provide a written explanation of denial to the applicant.

Step 8: Reexamination

An applicant may apply for re-examination within sixty days of the date of a rejection decision. The applicant may be required to amend the specifications or drawings at this time.

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