Absolute novelty, inventiveness (non-obviousness) and industrial applicability are the three basic requirements for patentability.

Absolute Novelty:   The absolute novelty requires absolutely no prior publication, no public use, no prior patenting and no prior offer for sale or display at an exhibition of the subject matter before the filing date.  If the publication, exhibition, and public use are for research or experimental purposes, such subject matter do not loose its novelty, however the patent application for such subject matter must be filed within six (6) months. 

Inventiveness (Non-Obviousness): A patent may not be granted to an invention that simply utilizes the technology or knowledge of a prior art that is obvious to persons skilled in the art.  However, the examiners at TIPO have not applied this standard consistently, and therefore it is sometimes confusing to define as to what level of improvement is considered non-obviousness. 

Industrial Applicability: An invention may not be granted a patent unless it is industrially applicable.  The Patent Law does not require the applicability of an invention to a stage of application in industrial production.  An invention, which is considered workable in the future is also allowable.  These are especially significant for a chemical patent where applicants need not prove that everything covered by the claims would work.

Who can file a patent application with TWIPO?

Inventor(s) and Assignee(s) who owns the entire right of the invention are allowed to file a patent application.   

However, if an assignee who owns the entire right of the invention files the patent applicantion, an assignment executed by the concerned inventor(s) is required. 

There are three types of patents namely Invention patent, Utility Model patent and New Design patent.

What is an Invention patent?

What is a Utility model Patent?

Utility Model Patent includes creation or improvement with respect to the form, construction or fixture of an object.

What is a New Design patent?

New Design Patent includes novel creation with respect to shapes, patterns, colors, or any combination thereof. 

Can I covert an Invention patent application into a New Utility patent application and vice versa?

Yes, you can.  However, such request must be filed before receipt of the allowance notice or the final office action of the original application or within 60 days following a receipt of final office action

What will be the filing date for a converted patent application?

Such filing date shall be based on the original filing date.

What are the required documents for filing an Invention patent application?

1.         specification and drawings;

2.         an original oath executed by the inventor(s);

3.         an original Assignment executed by the inventor(s) if the applicant is not the inventor  

            himself;

4.         an original executed power of attorney; and

5.         certified copy of the corresponding patent application, if applicable. 

The specification and drawings, and particulars of Applicant and Inventor(s), namely Name(s), address and nationality are minimum documents requirement for filing a new patent application.  The original executed Oath, Assignment, and Power of Attorney should be filed within four (4) months from the filing date with the Intellectual Property Office.  And an additional three-month extension can be requested.  
If the application claims the priority benefit of a corresponding application, then a certified copy of the corresponding patent application must be filed with IPO within four (4) months from the filing date. 

How long will it take to obtain an Invention patent?

Normally, it takes about a year or two after filing a Request for substantive Examination.

What are the required documents for filing a Utility Model patent application?

1.        specification and drawings;

2.        an original oath executed by the inventor(s);

3.        an original Assignment executed by the inventor(s) if the applicant is not the inventor 

           himself;

4.        an original executed power of attorney; and

5.        certified copy of the corresponding patent application, if applicable.

What are the required documents for filing a New Design patent application?

1.        specification and drawings;

2.        an original oath executed by the inventor(s);

3.        an original Assignment executed by the inventor(s) if the applicant is not the inventor 

           himself;

4.        an original executed power of attorney; and

5.        certified copy of the corresponding patent application, if applicable. 

The specification and drawings, and particulars of Applicant and Inventor(s), namely Name(s), address and nationality are minimum documents requirement for filing a new patent application.  The original executed Oath, Assignment, and Power of Attorney should be filed within four (4) months from the filing date with the Intellectual Property Office.  And an additional three-month extension can be requested. 

How long will it take to obtain a New Design patent?

Normally it takes about a year or so.

Will TWIPO accept foreign language specification?

TIPO do not accept foreign language specification.  However, it is not necessary to file a Chinese language specification at the time of filing, a specification of a corresponding application in any foreign language is acceptable.  The Chinese translation specification should be submitted within four (4) months after the filing date.

Is there Laid-Open system in Taiwan?

With the passage of the amended patent law, a patent application filed on or after October 26, 2002 will be automatically published in the Laid-Open Gazette after 18 months from the filing date.  The Laid-Open System is provided under the Articles 36-1 to 36-6 of the Patent Law. 

However, patent applications that include national defense secret or contrary to public order and morals will not be published in the Laid-Open Gazette.  Further, the patent application which ha been withdrawn within 15 months after the filing date will not be published in the Laid-Open Gazette.  

Is it possible to request for early publication?

Yes, it is possible to request for an early publication of the patent application.  However, only the applicant is allowed to make such request. 

The request for early publication can be granted provided the applicant provides reasonable evidence that a third party is infringing the invention.

When to apply for substantive examination for invention patents?

A request for substantive examination can be filed within three (3) years after the filing date.  The applicant or any other person may file a request for substantive examination with the TIPO.  The patent will be granted if the patent application being examined and found to meet the patentability requirements. 

Failure to file a request for substantive examination within the prescribed time limit (within three (3) years) will be deemed withdrawn by the applicant.

Can I request for an early Examination?

The Applicant can file a request to expedite the substantive examination of a laid-open patent application may be filed with the IPO together with related evidence if a third party has been or is commercializing the same technical contents as claimed in the application pursuant to Article 36-4 of the patent law.

When does the patent right begin to effect? Can an applicant account the damages of infringement from the filing date?

The patent right begins from the date of publication.  However, the applicant will be able to enforce this right upon the grant of the patent.  In other words, a provisional protection right will be conferred to the applicant from the date of the laying open pursuant to Article 36-5 of the patent law until grant of the patent. 

The applicant cannot exercise his patent right against the infringer and claim for damages accounting from the filing date.

Can I claim the benefit of priority over an application filed in my home country in Taiwan?

Yes, you can, provided your home country:

1)     belongs to countries that have reciprocal agreement with Taiwan; and

2)     a WTO member;

With what Countries Taiwan has reciprocal agreement?

The United States, Australia, France and countries of European Community have reciprocal agreement with Taiwan.   

Accordingly, foreign applicants from United States, Australia, France and countries of European Community may claim priority over the corresponding first/priority patent application.   

In order to claim the priority benefit, the application should be filed, within twelve (12) months for invention/utility applications and within six (6) months for trademark applications, after the filing date of the first/priority patent/trademark application.

Is Taiwan a PCT member?

No.  However, the IPO released a public announcement on November 27, 2002 that an applicant is entitled to claim priority over an international application of PCT or EPC if the applicant’s home country is a member of the World Trade Organization (WTO), provided:

1.  the applicant’s home country is the designated countries for the international application; and

2. the applicant’s home country recognizes the international application as a domestic application.

Is Taiwan a WTO member?

Yes, Taiwan entered WTO on January 1, 2002.  With accession of Taiwan to WTO on January 1, 2002, an applicant is entitled to claim priority over the first/priority patent application filed on or after January 1, 2002 in any other WTO member country.   

In order to claim the priority benefit, the application should be filed, within twelve (12) months for invention/utility applications and within six (6) months for trademark applications, after the filing date of the first/priority patent/trademark application.

How long is the Invention patent term?

Twenty (20) years from the effective filing date. 

How long is the Utility Model patent term?

Twelve years (12) from the effective filing date.

How long is the New Design patent term?

What are the unpatentable subject matters?

1.  New species of animal and plant, however with exceptions to cultivation and growth processes of  new plant species.

2.  Methods of treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on human or animal body.

3.  Scientific principles and mathematical theorems.

4.  Rules and methods for playing games and sports.

5.  Other schemes and methods which can be implemented only through reasoning or memory.

6.  Inventions, the use of which is detrimental to public order, morality or public health.

7.  The shape of the article simply representing a functional design.

8.  A pure artistic creation or artistic work.

9.  Layouts of integrated circuits and/or electronic circuits.

What acts constitute infringement?

1.  Making, Using or selling the Patented Product.

2.  Using the Patented Process.

3.  Using or Selling the Product directly obtained by the Patented Process.

4.  Importing the Patented Product or Importing the Product directly obtained by the Patented Process.

Can I enforce my New Utility Model patent?

Yes, you can.  However, you will need a valid technical report issued by the concern office at the TWIPO in order to enforce your Utility Model patent.

What is a technical report?

The Technical report ascertains that the Utility Model patent meets the patentability requirements – novelty, inventiveness and industrial applicability.

The adoption of formality examination of utility model application for registration thereof without looking into the substance of the utility model application, may lead to considerable ambiguity and uncertainty of the claimed invention.  Therefore, a system of technical (evaluation) report for the utility model patent is introduced.  The system of technical (evaluation) report requires an interested party to file a request for technical report with the concerned office at the TWIPO, where the utility model application is examined to ascertain its patentability. 

An interested third party may file a request for technical report pursuant to Article 103-105.  This action is an economical way of preventing the patentee from exploiting the patent right to significantly hamper his/her commercial interests and or research & development. 

Where and how can I file a request for a technical report and how long will it take to get one?

A request for technical report can be filed at the TWIPO.  For making such request, one should File the application form and pay the official fees.  Normally, the technical report will be issued within six (6) months.

Can a third party file a request for a technical report?

Any interested party can request for the technical (evaluation) report from the Office after the utility model patent application is published. 

Can a third party use the technical report to invalidate a Utility Model patent?

No.  A technical evaluation report can not be used to invalidate a utility model patent.  Invalidation must follow the invalidation proceedings.

What are opposition and invalidation?

Opposition:  Opposition procedure is recognized as a review system that allow the general public to file opposition within a three-month post-publication statutory period before the granting of a patent right to the applicant.    However, the opposition procedure has been abolished in order to simplify the administrative proceedings and public exploitations.  Due to the abolishment of the opposition procedure, after the patent is examined as granted, upon paying the issue fee, the patent certificate may be issued without delay.

Invalidation:  Invalidation procedure after obtaining patent rights is for invalidating the patent right.  Even though the purposes and results of the invalidation procedure are similar to that of the opposition procedure, invalidation normally arise from patent infringement disputes between relevant parties. 

Can I extent my patent term because of regulatory procedure delays?

What are the remedial proceedings for patent infringement?

In short, the pre-trial considerations and measures are as follows:

1.  investigating the alleged infringement in the market place;

2.  comparing whether the patent claims cover the accused product or process of the valid patent;

3.  statute of limitations;

4.  issuing a warning letter;

5.  filing and proceeding with civil/criminal actions; and

6.  obtaining the preliminary injunction.

How can I procure patent protection in China?

There are two ways for foreign nationals to procure patent protection in China:
1.  by filing a convention patent application; or

2.  by filing a PCT patent application entering into Chinese national phase.

What is a Convention Patent Application (In China)?

Convention patent application includes Invention, Utility model and design patent applications.  

The priority time limit for inventions is twelve (12) months. The application can be still filed as a non-convention application after the lapse of twelve (12) months grace period, however the application must be filed before the application first filed in another country is published.

What is a PCT international patent application for entry into the Chinese National Phase?

What are the required documents for filing a Trademark application?

1.        applicant(s) name, address and nationality;

2.        a trade mark specimen;

3.        priority documents, if applicable;

4.        an original executed power of attorney (POA); and

5.        a list of services/goods and class designations.

How does TIPO classify goods and Services?

How long will it take to register a Trademark?

How long is the Trademark term?

What are the Trademark use requirements in Taiwan?

Use of a registered mark in Taiwan must commence within three (3) years of its registration date, otherwise the mark will be canceled.

Additionally, if use of the mark in Taiwan is suspended for any consecutive three (3) year time period after its registration, the mark will be canceled.

How is the trademark use defined in Taiwan?