Notice of the Revised Patent Official Fees

Dear Clients and Associates,

The Taiwan Intellectual Property Office (TIPO) has published the amendments to the official fees for patent prosecution effective from January 1, 2010. New rates for claim fees have been added, but the annuity fees have been reduced generally. Detailed information follows.

The new claim fees only apply to new applications filed after January 1, 2010 when the Request for Substantive Examination is filed. Although the official fee for filing the Request for Substantive Examination has been reduced from NT$8000 to NT$7000, when such request is filed, a new claim surcharge of NT$800 for each additional claim in excess of 10 will be incurred. The excess page surcharge of NT$500 for each additional 50 pages or part thereof remains unchanged. The changes mean that the official fees now more closely reflect the number of examined claims.

In addition to the Request for Substantive Examination, the new claim surcharge will also be applied to applications filed after January 1, 2010 when the Request for Amendment is filed, according to the number of examined claims, with each examined claim in excess of 10 incurring an additional NT$800 fee. In detail, if the original claims have not been examined before the amendment is filed, the claim fees are calculated according to the final number of amended claims (after deletion or addition). However, if the original claims have been examined before the amendment is filed, the claim fees are calculated according to the number of original claims (having been examined) in addition to the number of newly added claims, even if some original claims are deleted. In other words, once the claim has been examined, it will always become count toward the total number of claims for charging.

For example, if a new patent application is filed containing 8 claims and after receiving the examination report the applicant files a Request for Amendment to delete 2 original claims and add 5 new claims, even though the final number of the amended claims (after deletion and addition) is 11, the claim fees are calculated as 13 (8 + 5) because the 2 deleted claims would have already been examined. Thus, the applicant should pay for 3 excess claims when filing the Request for Amendment. On the other hand, if the applicant files 12 claims so paying the 2 excess claim fees when filing the Request for Substantive Examination, then later deletes 3 claims, a refund for the 2 excess claim fees can be requested if the original 12 claims have not been examined.

For patent applications filed before January 1, 2010, the official fees are unchanged and no excess claim fees for both the Request for Substantive Examination and the Request for Amendment will be charged. The official fee for filing a Request for Substantive Examination remains NT$8000, which includes the first 50 pages of the specification (including claims) and drawings.

As listed below, most annuity fees have been reduced after January 1, 2010. The new rates of annuity fees are applied to any granted patents. Refunds in the amount of the surplus or the surplus amount used for the next year annuity are available to applicants who paid the annuity fees in advance according to the former rates for deadlines falling after January 1, 2010.

Annuities	Invention Patent		Utility Model		Design Patent
Payment Date	2009	2010	2009	2010	2009	2010
1st-3^rd	2500	2500	2500	2500	2500	2500
4th-6^th	5000	5000	5000	4000	5000	3500
7th-9^th	9000	8000	9000	8000	9000	5000
10th-20^th	18000	16000	18000	8000	18000	5000

If you require further information or explanation, please use ipdept@taie.com.tw to contact us.

Annuities