This is intended to provide essential information for obtaining an invention patent in Taiwan (the Republic of China, ROC). We hope this information will help you to file applications with the Intellectual Property Office of Taiwan (TIPO) efficiently and economically.
I. Considerations before Filing Invention Patents in Taiwan
A. Reasons for obtaining a Taiwan Patent
From a strategic standpoint, patents are important, particularly for defensive reasons. Also an extremely important tactic is filing patents deliberately in competitors' countries to prevent them from opportunistic, encroaching behavior.
In order to obtain patent rights in Taiwan, an applicant has to file applications with the local Patent Authority (TIPO) as Taiwan has its own jurisdiction and patent law. The applicant could be any person who wants patent protection in Taiwan or a patent portfolio in Mainland China, Hong Kong and Macao as well.
B. National Filing
Some international or regional harmonization, like the Patent Cooperation Treaty (PCT) and the European Patent Convention (EPC), have been developed on patent filing to streamline the process instead of separately filing in each individual country. Since Taiwan has not yet joined any other international or regional treaty and agreement other than the World Trade Organization (WTO), direct national filing is the only way a patent can be sought.
Patent filing in Taiwan may be considered less convenient since an applicant needs to handle it separately from filing in countries other than Taiwan. Nevertheless, except for the particular timing of filing in Taiwan, other procedures related to patent prosecution and the benefits that a patent applicant can enjoy in Taiwan are in full compliance with the international harmonization since Taiwan became a WTO member in 2002.
C. Invention Patent
The Patent Law in Taiwan governs invention, utility model and design patents. The rights for the three types of patents begin on the patent publication date and respectively expire twenty (20), ten (10) and twelve (12) years from the filing date. The subject matter of an invention patent may be an article (substance), a process (method) and their utilities, while the subject matter of a utility model patent is limited to an article with a three-dimensional structure. A design patent is granted for a creation made in respect of the shape, pattern or color, or a combination thereof for an article appealing to the eye. Pursuant to the Patent Law, an invention or design patent application is subject to formality and substantive examinations, whereas a utility model patent is issued without undergoing substantive examination.
Despite being able to convert between each type of patent application during prosecution, filing an application of the most appropriate type certainly saves time and costs from the very beginning. Hereinafter details of patent filing and prosecution in Taiwan will be discussed, with the focus on invention patents, the absolute majority among the three types of patents that TIPO has issued for years.
D. Unpatentable Subject Matter
The Patent Law provides for bars to the following subject matter:
Animals, plants, and essentially biological processes for the production of animals or plants, except microbiological processes.
Diagnostic, therapeutic or surgical methods for the treatment of diseases of humans or animals.
Inventions detrimental to public order, morality or hygiene.
E. Pre-grant Publication (Laying-Open)
According to the Patent Law, an invention patent application is subject to pre-grant publication (laying-open) for public inspection after eighteen months from its filing date or, when a priority has been claimed, from its priority date. TIPO may publish an invention patent application earlier upon request from the applicant. The pre-grant publication does not apply where a patent application a) has been withdrawn within fifteen months from its filing date (or priority date); b) covers state secrets; or c) claims an invention contrary to morality or public order.
Once a patent application has been laid open, provisional protection is bestowed on the applicant. If a third party commercially exploits an invention claimed in the laid-open application before a patent is granted, the applicant of the laid-open application can file a request with evidence proving the same for prioritized substantive examination with TIPO. When the laid-open application matures into a patent, the patentee may further demand commensurate compensation where a) the patentee (applicant) had informed the third party of the laid-open application in writing and the third party continued commercial exploitation of the claimed invention; or b) the third party was aware of the laid-open application before commercially exploiting the claimed invention.
F. Request for Substantive Examination
An applicant is allowed to file a written request for substantive examination of an invention patent application within three (3) years from the filing date of that application. On the basis of the application for which a request for substantive examination was filed, a divisional or conversion application may be filed, upon request or voluntarily, beyond the three-year period. In this situation, the applicant should request substantive examination within thirty (30) days after the divisional or conversion application is filed. The request for substantive examination cannot be withdrawn. If no request for substantive examination is filed within the three-year or thirty-day period, the corresponding invention application will be deemed to have been withdrawn.
A third party is allowed to file a request for substantive examination within the three-year or thirty-day period. Upon receiving such a request, TIPO should notify the applicant of the request and later serve a copy of office action accordingly. Should a third party file such a request the applicant is allowed three (3) months to file any voluntary amendments.
G. Accelerated Examination Program (AEP)
An applicant could request an accelerated examination on condition that his/her TW application is under the substantive examination procedure and its corresponding application has been granted following substantive examination by a foreign patent authority. Therefore, the request for substantive examination should be made before applying for accelerated examination. Further, under AEP the corresponding application is acceptable provided that the subject matter of the claims in the TW application can be directly and unambiguously derivable from the disclosure of the corresponding application. TIPO will issue an examination report or decision within six months from receipt of the following documents:
A request form for accelerated examination;
A copy of the claims of the patent issued by a foreign patent authority in the original language and in Chinese; or
A copy of the notice of allowance from a foreign patent authority, and the to-be-granted claims in the original language as well as in Chinese; and
An explanation on the differences in the claims between the TW application and the corresponding application if such differences exist.
H. Absolute Novelty and Grace Period
Taiwan Patent Law constitutes a first-to-file system with the absolute novelty principle. An innovative idea should be filed as a patent application shortly after credentials showing reduction to practice become available. There is no "one-year statutory bar" to the novelty of an invention in Taiwan. Namely, an invention patent application will not be considered devoid of novelty just because it is filed in Taiwan more than one (1) year from the first filing of the same invention case in any other country.
Despite the absolute novelty requirement for an invention for which a patent is sought, the Patent Law provides a grace period under the following three circumstances. Filing a patent application within six (6) months from the date of the prior disclosure of the invention as claimed in the application will not be detrimental to the novelty.
A prior publication of the invention was simply for the purpose of research or experiment.
A prior exhibition in which the invention was displayed was held or approved by the government.
Prior disclosure of the invention in an occasion not intended by the applicant.
I. International Priority Claim
A patent applicant of the nationality of any WTO member is allowed to claim priority of the first (basic) patent application among the jurisdictions of the WTO members when filing a corresponding application in Taiwan within twelve (12) months from the filing date of the first application. The first patent application among the jurisdictions of the WTO members may refer to a national application in the jurisdiction of a WTO member, an application filed under the EPC, or a PCT application designating at least one WTO member country.
In addition, a patent applicant whose country of nationality is neither a member of the WTO nor a country reciprocal with Taiwan on claim for priority, is also allowed to claim priority if the applicant has a residence or business office within the territory of a member of the WTO or a country reciprocal with Taiwan on claim for priority.
J. Domestic Priority Claim
Further, an applicant is allowed to claim priority of the first (basic) patent application filed in Taiwan when filing a corresponding application in Taiwan within twelve (12) months from the filing date of the first application. The prerequisites are that
No international or domestic priority claim has been made with the first application in Taiwan; and
Not yet any decision of substantive examination has been made with the first application in Taiwan.
II. Formality Requirements for Effective Filing
A. Documents Required to Obtain a Filing Date
To obtain a filing date for a patent application, the following documents must all be submitted to TIPO:
Two copies of the patent specification (including at least one claim) in any language;
Two copies of necessary drawings;
Application forms in Chinese containing the following information:
(i) inventor(s); and
(ii) applicant(s); and/or
(iii) the application(s) on which the priority claim is based if any; and/or
(vi) the deposit information if the invention involves a biological material and/or the material has been deposited in an International Depositary Authority (IDA) under the Budapest Treaty.
To claim priority, the patent applicant needs to declare the priority claim and submit the relevant information to TIPO when filing the patent application in Taiwan. The information pertains to (1) the country where the first application(s) was filed, (2) the serial number(s) of the first application(s) and (3) the filing date(s) of the first application(s). A priority claim later than the filing date of the relevant patent application in Taiwan is not allowable.
B. Documents Allowed to Be Submitted After Filing
The following documents and information (a) through (f), if relevant and not submitted upon filing the relevant application in Taiwan, are required to be submitted to TIPO within four (4) months from the filing date of the application in Taiwan. The document for item (g) must be submitted to TIPO within a non-extendible (3) month deadline from the filing date.
Two copies of the specification and claim(s) in Chinese.
Document(s) to prove the identification of the applicant(s) from certain regions.
Document(s) to prove the right to file a patent in Taiwan, e.g., an assignment being either one of:
(i) an original assignment signed by all inventor(s) specific to the right to file a patent in Taiwan;
(ii) a copy of a general (not Taiwan-specific) assignment executed by all inventor(s).
A (general) power of attorney.
Document(s) to prove a grace period claim.
A certified copy of the priority document (and Chinese translation of the cover page) when priority of a foreign application is claimed.
The certificate(s) of biological deposit(s) made as required under the Patent Law.
According to current practice, an unauthenticated copy of any of the documents (b) through (e) is acceptable to TIPO if a declaration signed by the applicant (or the patent attorney) attesting that the unauthenticated copy is a true copy of the genuine document is submitted as well. Documents (f) and (g) must be original documents or authenticated copies.
According to current practice, the deadline for submitting the aforementioned documents (a) through (e) may be extended by a maximum of six (6) months from the filing date of the patent application in Taiwan. However, the four-month deadline for submitting the certified priority document is NOT extendible. If the priority document cannot be submitted before the deadline, the priority claim will be rejected.
III. Formality Requirements for Specifications and Drawings
The title of the invention is required to be specific and clear enough to denote the specific invention claimed. General and indefinite titles such as "Apparatus", "Chemical Compounds" and "Process" are not acceptable to TIPO.
B. Abstract
The abstract is usually a narrative summary of the generic claim(s) in a patent application. The patent rules in Taiwan require the abstract to depict the general formula of the chemical compounds for which a patent is sought.
C. Detailed Description of Invention
The patent rules in Taiwan require the description of the invention be drafted with respect to the following section headings:
(i) Technical field(s) to which the invention relates.
(ii) Prior art.
(iii) Content of the invention.
(iv) Mode for carrying out the invention.
(v) Brief description of the drawings.
The order or manner in which the description of the invention is drafted may differ from the format required above so long as a better understanding of the nature of the invention can be attained. Further, section (v) may be omitted if drawings are not submitted.
Description of the relevant prior art is required to be presented in the specification. The extent to which the prior art is described depends on the applicant’s best knowledge of the state of the art. Therefore, the applicant does not bear any statutory burden to disclose information to which the applicant’s attention is drawn after the patent is filed.
The brief description of drawings (figures) needs to be drafted in clear and concise language with respect to each and every drawing in sequence. Description of symbols (reference numerals) for major constituent parts (components) present in the drawings should be listed against their name in the specification.
Particularly regarding the inventions in chemical and biological fields, working examples describing the experimental methodologies and results (data) are usually required. Generally, patent examiners at TIPO do not consider theoretical examples (without actual data) when assessing the enablement requirement.
IV. Formality Requirements for Specifications and Drawings
A. Title of the Invention
The title of the invention is required to be specific and clear enough to denote the specific invention claimed. General and indefinite titles such as "Apparatus", "Chemical Compounds" and "Process" are not acceptable to TIPO.
B. Abstract
The abstract is usually a narrative summary of the generic claim(s) in a patent application. The patent rules in Taiwan require the abstract to depict the general formula of the chemical compounds for which a patent is sought.
C. Detailed Description of Invention
(a) The patent rules require the description of the invention be drafted with respect to the following section headings:
(i) Technical field(s) to which the invention relates.
(ii) Prior art.
(iii) Content of the invention.
(iv) Mode for carrying out the invention.
(v) Brief description of the drawings.
The order or manner in which the description of the invention is drafted may differ from the format required above to attain a better understanding of the nature of the invention. Further, section (v) may be omitted if drawings are not submitted.
(b) Description of the relevant prior art should be presented in the specification. The extent to which the prior art is described depends on the applicant’s best knowledge of the state of the art. Therefore, the applicant does not bear any burden to disclose information to which the applicant’s attention is drawn after the patent is filed.
(c) The brief description of drawings needs to be drafted in clear and concise language with respect to each and every drawing in sequence. Description of symbols (reference numerals) for major constituent parts (components) present in the drawings should be listed against their name in the specification.
Particularly regarding inventions in chemical and biological fields, working examples describing the experimental methodologies and results (data) are usually required. Generally, patent examiners at TIPO do not consider theoretical examples (without actual data) when assessing the enablement requirement.
D. Claims
(a) A multiple dependent claim is not allowed to serve as a direct or indirect basis for other multiple dependent claims.
(b) For clarity, a multiple dependent claim is required to be expressed in the alternative form, so should be stated "according to any one of Claims X to Y" or "according to Claim X or Y". Therefore, "according to Claims X to Y" or "according to Claims X and Y" are not acceptable.
(c) TIPO does not accept omnibus claims, for instance, "…as described in the embodiments herein".
(d) An independent claim is not allowed to recite more than one subject matter. A dependent claim should refer to the same subject matter as that on which the claim directly or indirectly depends.
(e) A dependent claim is required to refer only to one or more preceding independent or dependent claim. Moreover, an independent claim cannot appear between a dependent claim and the independent claim on which it depends.
A claim may include a chemical or mathematical formula but no drawings.
E. Drawings
Formal drawings must be prepared in engineering drawing methods. Draft drawings may be submitted as temporary substitutes if the formal drawings are not available when filing. Generally the drawings cannot contain any descriptive words, unless otherwise indispensable.
IV. Suggested Information Presented in Order Letters to Tai E
A. Information for Filing
To expedite filing of an invention application, we suggest indicating all of the following information in your order letter:
(a) Name(s) and address(es) of the inventor(s).
(b) Name(s), address(es) and nationality(ies) of the patent applicant(s).
(c) Title of the invention.
(d) Priority information, i.e., the serial number(s), filing date(s) and the country(ies) receiving the basic application(s).
The deposit information if the claimed invention involves a biological material and the material has been deposited in an International Depositary Authority (IDA) under the Budapest Treaty
B. Request for Substantive Examination
As mentioned in Item I above, if no request for substantive examination is filed within the three-year period from the filing date, the application will be deemed to have been withdrawn. Therefore, in the order letter you might indicate that substantive examination should be requested simultaneously with filing.
C. Request for Delayed Patent Publication
A patent will be published in the Patent Gazette under the condition that the issuance fee and the first annuity are paid within three (3) months after receipt of the notice of allowance. A request for post-ponement of publication may be filed at the time of paying the issuance fee and the first annuity. Upon request, the publication of the patent can be delayed by no more than three (3) further months. As an invention application possibly matures into a patent shortly after the application is filed with a request for substantive examination, a delay of patent publication may be necessary. We suggest indicating in your order letter if a delay of patent publication is necessary.
D. Annuity Payment
You may instruct us in your order letter to automatically pay annuities on behalf of the patentee(s)/applicant(s).
V. Recent Advances and Breakthroughs in the Protection of Patent Rights in Taiwan
The Administration has recognized the importance of the protection of intellectual property rights (IPR) and committed to improving the domestic environment to comply with international standards. The steadily increasing number of patent filings from foreign applicants in recent years, as well as the removal of Taiwan from the US Special 301 Watch List in 2009 are testament to the continuous effort and progress on IPR. The Administration is taking a wide range of substantive measures, inter alia, establishing the Intellectual Property (IP) Court and launching new court proceeding laws, enacting the Patent Attorney Act, and promoting the Accelerated Examination Program (AEP).
Since July 1, 2008, IP Court has been attempting to improve the efficiency and quality of litigation and avoid conflict among different jurisdictions in Taiwan. The IP court possesses jurisdictional competence over civil, criminal and administrative actions, and an integration of common courts and administrative courts to a considerable extent. Therefore, patent infringement litigation can be streamlined without stays when a validity issue is raised and different kinds of lawsuits against the same patent infringer underlying the same factual issues are heard by the same judge(s). Moreover, technical examination officers are staffed to assist judges in technological issues.
The Patent Attorney Act, taking effective from January 1, 2008, sets forth new requirements for a qualified patent attorney. According to the Act, an attorney candidate in an attempt to practice before TIPO is required to pass the national patent attorney examination, followed by prevocational training and registration with the statutory patent attorneys association. All the requirements are provided for the purpose of selecting and revealing competent patent attorneys specializing in both technology and patent laws for the best interests of inventors/ patentees served.
On January 1, 2009, TIPO launched the program AEP, a year-long interim program throughout 2009. The program is subject to official modifications and extensions of time after adequate assessment of the effects. TIPO developed this program inspired by the concept of the Patent Prosecution Highway (PPH). Under the AEP, an applicant can file a request with TIPO for accelerated examination. Accelerated examination will be granted upon request on condition that the applicant’s TW application is pending, undergoing substantive examination and the applicant submits the required documents proving that a notice of allowance or a patent from a patent authority in any other country or under an international convention has been issued on the same invention for which a TW patent is being sought. Once the AEP is applied, TIPO will issue an examination report or decision within six months from the receipt of all required documents. It is expected that the period of patent prosecution for international patent applications will be shortened by the interim program.
