Taiwan Patent FAQs
Q1:
What types of patents are set forth in the Patent Act?
A1:
In Taiwan, there are three types of patents: invention patents, utility model patents, and design patents. The patent term for the invention patent is 20 years, while 10 years for the utility model patent , and 15 years for the design patent. All above patent terms are calculated from the filing date.
 
Q2:
What is an invention patent?
A2:
Article 21 of the Patent Act provides: “Invention” means the creation of technical ideas, utilizing the laws of nature. Therefore, an invention must include technical characteristics, i.e. the means whereby a problem is solved by the invention must be a technical means involved within a technical field. If an invention does not have technical characteristics, for example, a mere discovery or a scientific theory, it will not comply with the definition of an invention pursuant to Article 21 of the Patent Act.
 
Q3:
What is a utility model patent?
A3:
Article 104 of the Patent Act provides: “Utility model” means the creation of technical ideas relating to the shape or structure of an article or combination of articles, utilizing the laws of nature. A utility model is the creation of technical ideas relating to the shape or structure of an article or combination of articles, which occupies certain space and utilizes the laws of nature. Abstract technical ideas do not match the definition of utility model.
 
Q4:
What is a design patent?
A4:
Article 121 of the Patent Act provides: “Design” means the creation made in respect of the shape, pattern, color, or any combination thereof, of an article as a whole or in part by visual appeal. The subject matter of protection by the design patent is limited to an appearance design comprising the shape, pattern, color, or the combination of any two or three thereof, which must include the characteristics of visual creation.
 
Q5:
Who can apply for a patent?
A5:
Anyone who owns “the right to apply for a patent” according to the Patent Act can apply for a patent. Subject to provisions of this Act otherwise prescribed or the covenants otherwise set forth in an agreement, the term “the owner of the right to apply for a patent” shall mean an inventor (invention patent), a utility model creator (utility model patent), a designer (design patent), or the assignee or successor   thereof. Since Legal persons’ research and development is conducted by natural persons, inventors, creators of utility models, and designers of design patents are restricted to natural persons.
As a right in the private law, “the right to apply for a patent” is transferrable. When an inventor, a utility model creator, or a designer does not wish to file a patent application, he/she can transfer “the right to apply for a patent” to others who, in consequence, enjoy “the right to apply for a patent” from transfer and can apply for a patent in their names. Hence, a patent applicant is a party who files a patent application to a patent competent authority. As the subject of rights and obligations, the patent applicant must possess independent personality and be either a natural person or a legal person.
 
Q6:
Who should own the patent right of the creation completed by an employee?
A6:
Paragraph 1 of Article 7 of the Patent Act provides: 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.
Under an employment contract, an employee is compensated by his/her employer. From the perspective of employer-employee relationship, the employer shall enjoy “the right to apply for a patent“ and own the patent right of outcomes from the research and development conducted by the employee while performing the employee duties. Hence, the employer enjoys the right to apply for a patent and own the patent right of creations made by employees in the performance of duties.
 
Q7:
Who should own the patent right of the creation completed by a professional service provider or external expert?
A7:
Paragraph 3 of Article 7 of the Patent Act provides: Where a fund provider appoints another party to conduct research and development, the ownership of the right to apply for a patent and the patent right in connection with the outcome of such research and development shall be vested in the party as mutually agreed upon in an agreement between both parties, or such rights shall be vested in the inventor, utility model creator or designer in the absence of such agreement. However, the fund provider shall be entitled to exploit such invention, utility model or design.
Funding others for completing an invention, utility model or design refers to a party hiring another party to conduct research and development without an employer-employee relationship. In terms of law, both parties are in an owner-contractor relationship. Therefore, the fund provider merely funds the research and development, whereas the other party (contractor) determines independently related knowhow, equipment, and research processes. By the principle of autonomy of private law, the ownership of the outcomes from such research and development is in principle vested in the party as mutually agreed in an agreement between both parties. On the other hand, such ownership is vested in the inventor, utility model creator, or designer (the professional service provider or external expert) in the absence of such agreement.
 
Q8:
What are the documents required for patent application?
A8:
When applying for an invention patent or a utility model patent, applicants should submit the application form, patent specification, claims, abstract, and drawings of the invention to the patent competent authority. When applying for a design patent, applicants should submit the application form, patent specification, and drawings to the patent competent authority.
To claim a right of priority, applicants should not only specify this in the application form but also submit a supporting document within 16 months from the earliest date of priority.
 
Q9:
If a substantive examination is not requested when filing a patent application, what is the deadline for requesting a substantive examination?
A9:
Within three years from the date of filing an application for invention patent, anyone can apply for a substantive examination to the patent competent authority. The application will be considered as withdrawn for failure to do so.
 
Q10:
What will be examined during a formality examination of a utility model patent?
A10:
A formality examination refers to the examination of an application for utility model patent by the patent competent authority to determine if the utility model complies with the formal requirements based on the specification, claims, abstract, and drawings submitted by the applicant without conducting a prior art search and the substantive examination of compliance with the patentability of inventions.
Regarding the scope of formality examination, according to Article 112 of the Patent Act: A patent application for utility model undergoing formality examination shall be rejected under any of the following circumstances:
 
 
 
 
 
 

1.     where the utility model does not relate to the shape, structure of an article or combination of articles;
 
 
 
 
 
 

2.     If the utility model is contrary to public order or morality;

3.     violation of the method of disclosure. When disclosing the specification, claims, abstract, and drawings of a utility model patent, the author shall disclose items specified in Article 45 of the Enforcement Rules of the Patent Act, where Articles 17-23 of the Enforcement Rules shall apply mutatis mutandis. In the formality examination, as long as the items required in the Patent Act and the Enforcement Rules are disclosed in the specification, claims, abstract, and drawings will be acceptable, and there is no need to examine other substantial contents.

4.     violation of patent unity.

5.     where the description, claim(s), or drawing(s) does not disclose the essential matters or the disclosure therein is obviously unclear;

6.     where an amendment obviously extends beyond the scope of content disclosed in the description, claim(s) or drawing(s) as filed.
 
Q11:
Can I apply for early publication of an invention patent application?
A11:
Yes. The early publication of an invention patent application automatically takes place 18 months from the filing date. Applicants can apply for early publication of an invention patent application before the 18-month time limit.
 
Q12:
Can I apply for reinstatement after a delay of application?
A12:
Unless otherwise provided for in this Act, where a person filing a patent-related application fails to comply with the statutory or designated time period, the application shall be rejected. Where the delay is caused by natural disasters or reason(s) not attributed to the applicant, the applicant may, within thirty (30) days after the disappearance of such cause(s), file a written request to the patent competent authority stating the cause(s) for delay and requesting reinstatement. An application for reinstatement shall not be accepted where the application is delayed over one year after the expiry of the statutory time period.
 
Q13:
Can I apply for an invention patent and a utility model patent at the same time?
A13:
Yes, you can. The same applicant can apply for an invention patent and a utility model patent for the same creation on the same day, provided that he/she should specify each patent separately.
Where the patent competent authority finds no ground to disapprove the patent application after the substantive examination of the application for invention patent; the utility model patent has been granted before the decision to grant the invention patent is approved; and the utility model patent right is not extinguished or revoked, the patent competent authority shall notify the applicant to select one of them within a specified time period to prevent repeated grant of patents.
 
Q14:
How to file an objection to TIPO’s rejection of a patent application?
A14:
The first decision made after the substantive examination of an application for invention patent is called the “preliminary examination” decision. Applicants disagreeing with the decision to not grant the patent in the preliminary examination can request re-examination. Within two months after the “preliminary examination” decision is delivered, applicants can submit a statement of reasons to request re-examination. Applicants disagreeing with the decision made at the re-examination can appeal to the “Ministry of Economic Affairs” within 30 days after the decision is delivered.
 
Q15:
How to revoke a granted patent?
A15:
After a patent is granted, the interested party or any person can request a patent invalidation action to revoke the patent for reasons specified in items 1-3, paragraph 1 of Article 71 of the Patent Act. After a patent has been revoked, the patent right shall be deemed void ab initio.
 
Q16:
How to handle patent infringement?
A16:
Patent infringement is resolved through civil remedies. If there is infringement objectively or a likelihood of infringement, the patentee can request elimination or prevention of infringement. The patentee can also request destruction or other necessary disposition of the object(s) of infringement or the raw materials or tools for use in committing infringement.
Where the infringer commits infringement willfully or out of negligence, the patentee may claim damages. The right to claim damages will extinguish where the claimant fails to exercise such right within two years after the claimant has become aware of the damage and the damages obligor. The same applies when the claimant fails to exercise such right within ten years after occurrence of the act of infringement.
 
Q17:
When to request a technical evaluation report for a utility model patent?
A17:
As a utility model patent does not require a substantive examination, its patentability remains uncertain. To prevent patentees from causing damage to others by unjustly exercising or abusing their rights or abusing written warnings, Article 116 of the Patent Act provides: When exercising the right of a utility model patent, the patentee shall not make a warning without presenting the technical evaluation report of a utility model patent. Hence, when exercising their patent rights, the patentees of utility model patents shall present objective data for use in judgment, that is, technical evaluation reports, so as to prevent the patentees from abusing their rights. However, as the technical evaluation report is not a prerequisite for filing a lawsuit, a patentee can claim damages without presenting a technical evaluation report.
A patentee can request a technical evaluation report only after a utility model patent is published and the patent is granted. In addition, any person can request a technical evaluation report, even after the utility model patent has extinguished. However, if the revocation of a utility model patent is confirmed as a result of an invalidation action, the utility model patent right shall be deemed void ab initio. As the subject matter does not exist, the request for a technical evaluation report will not be accepted.