Applying for a patent

Patentability
What are the criteria for patentability in your jurisdiction?

The criteria for patentability in Taiwan include:

  • statutory subject matter;
  • enablement;
  • written descriptions;
  • industrial applicability;
  • novelty; and
  • non-obviousness.

The subject matter of an invention must include the creation of technical ideas using the laws of nature.  

The subject matter of a utility model must include the creation of technical ideas related to the shape or structure of an article or combination of articles using the laws of nature.

The subject matter of a design must include the creation of visual appeal in respect of the shape, pattern, colour or any combination thereof of an article as a whole or in part.

What are the limits on patentability?

An invention patent will not be granted for:

  • animals, plants and essentially biological processes for the production of animals or plants, except processes for producing micro-organisms;
  • diagnostic, therapeutic or surgical methods for the treatment of humans or animals; or
  • inventions that are contrary to public order or morality.

A utility model patent will not be granted if it is contrary to public order or morality.

A design patent will not be granted for the following:

  • the shape of an article that is solely dictated by its function;
  • fine art;
  • the layout of integrated circuits and electronic circuits; or
  • an article that is contrary to public order or morality.

To what extent can inventions covering software be patented?

To determine whether a software-related invention meets the definition of an ‘invention’, the content of the claimed invention – rather than the recitation form of the claims – must be considered in order to identify whether the invention (as a whole) is of a technical nature. If a portion of the claimed invention does not use the laws of nature, it will still meet the definition of an ‘invention’.

Judgments are made based on the technical features recited in the claims; but due to the special nature of software-related inventions, the specification must also be reviewed in order to understand the essential meaning of each feature of the claim. Therefore, during examination, an omnibus judgment is conducted by examining the invention in the claims as a whole and examining the specification, drawings and common knowledge at the time of filing in order to determine the problems intended to be solved by the invention and the technical means for solving the problems, with reference to common knowledge at the time of filing.

If the claims do not specifically recite essential technical features, but – after referring to the specification, drawings and common knowledge at the time of filing – the examiner finds that as a whole the invention is of a technical nature, but is not related only to the laws of nature, mathematical formulae, business methods, artificial rules, information disclosure or aesthetical creation, he or she will request that the applicant respond or make amendments on the grounds that the claims are unclear. If the examiner finds that software or hardware plays a significant role in the invention, but that the specification does not clearly or sufficiently disclose this (eg, how the software and hardware cooperate or how the problems are solved), he or she will consider whether a person skilled in the art could implement the invention.

To what extent can inventions covering business methods be patented?

If a business method is merely an artificial rule (eg, a social rule, empirical law or economic principle) and does not use the laws of nature, it will not meet the definition of an ‘invention’. However, if a business method uses computer-related techniques in its implementation, it will be judged based on those techniques. 

To what extent can inventions relating to stem cells be patented?

If an invention uses embryonic stem cells that have the potential to develop into a human, it will be considered contrary to public order or morality and thus will be unpatentable. Examples include human embryonic totipotent stem cells and methods of cultivating or proliferating human embryonic totipotent stem cells. Human embryonic pluripotent stem cells – which are separated from human embryonic totipotent stem cells – have no potential to develop into a human; therefore, they are not contrary to public order or morality.

Are there restrictions on any other kinds of invention?

No other restrictions apply.

Grace period
Does your jurisdiction have a grace period? If so, how does it work?

A grace period exists in Taiwan.

The following events will not preclude an invention from patentability, provided that the patent application is filed within six months of the event:

  • The invention was publicly disclosed as a result of conducting a test.
  • The invention was disclosed in a print publication.
  • The invention was displayed at an exhibition held or recognised by the government.
  • The invention was disclosed without the applicant’s consent.

An applicant claiming exemption must state the facts and relevant date of the patent application at the time of filing and provide proof within the period specified by the IP Office.

Oppositions
What types of patent opposition procedure are available in your jurisdiction?

No opposition procedure is available under Taiwan’s patent practices.

Apart from oppositions, are there any other ways to challenge a patent outside the courts?

Invalidation proceedings can be filed before the IP Office after a patent has been granted.

How can patent office decisions be appealed in your jurisdiction?

An administrative appeal can be filed before the Board of Appeal (BOA) of the Ministry of Economic Affairs against an unfavourable IP Office decision regarding invalidation proceedings.

An administrative appeal can be filed before the IP Court against an unfavourable BOA decision.

An administrative appeal can be filed before the Supreme Administrative Court against an unfavourable IP court decision. 

Timescale and costs
How long should an applicant expect to wait before being granted a patent and what level of cost should it budget for?

Invention patent applications take between three and four years to be granted. The total cost (excluding translation) for 10 claims is approximately $2,800.

Utility model patent applications take one year to be granted. The total cost (excluding translation) is approximately $1,700.

Design patent applications take one and a half years to be granted. The total cost (excluding translation) is approximately $1,900.

Enforcement through the courts

Strategy
What are the most effective ways for a patent owner to enforce its rights in your jurisdiction?

The most effective way for a patent owner to enforce its rights in Taiwan is to enter into a licensing agreement or to initiate an infringement action before the IP Court.

What scope is there for forum selection?

Due to its IP expertise, the IP Court has jurisdiction over almost all patent-related actions, including civil and administrative procedures.

Pre-trial
What are the stages in the litigation process leading up to a full trial?

Before a full trial of less than one hour begins, at least one pre-trial hearing takes place in order to review evidence, consolidate the issues and hear any petitions regarding evidence.  

How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so?

Defendants must have valid reasons to stay the proceedings. If the plaintiff can show that the defendant’s claims are baseless, the court will resume the proceedings.

The courts have full discretional power as to whether a defendant is intending to delay the proceedings. 

How might a party challenge the validity of a patent through the courts in anticipation of a potential suit for infringement being issued against it?

Parties normally challenge the validity of a patent before the IP Office. Losing parties can subsequently appeal before the Board of Appeal of the Ministry of Economic Affairs, the IP Court and the Supreme Administrative Court.

A party can also challenge the validity of a patent during a patent infringement suit. The basic approaches are substantially similar to those used in invalidation proceedings before the IP Office. For example, parties can use prior art defences to substantiate invalidly.

In theory, IP Court and Supreme Court decisions on patent validity are binding only in the case at hand, not any parallel or associated cases. Final binding judgments regarding patent validity are obtained through the administrative system (ie, claims brought through the IP Office to the Supreme Administrative Court). In practice, a court’s decision on the validity of a patent normally influences other courts’ decisions regarding the same patent.

At trial
What level of expertise can a patent owner expect from the courts?

The IP Court was founded under a new system in 2008; as such, it has yet to establish a comprehensive body of jurisprudence. Most first-instance judges in the IP Court are relatively young and have little practical experience in the IP field, so parties often cannot trust or accept their decisions. This similarly applies to attorneys with no technical backgrounds or patent prosecution experience.

In several cases, the IP Court has issued disappointing decisions (particularly in the patent field) because the findings on claim construction for invalidity or infringement were reckless and violated the intention of the law. As a result, some domestic enterprises have refused to file patent applications in Taiwan. 

Are cases decided by one judge, a panel of judges or a jury?

One judge hears all first-instance proceedings in the IP Court. Three judges hear IP Court appeals. A panel of five judges hears all cases brought before the Supreme Court.

If jury trials do exist, what is the process for deciding whether a case should be put to a jury?

Jury trials do not exist in Taiwan. 

What role can and do expert witnesses play in proceedings?

In patent cases, expert witnesses can help judges to find facts which involve professional knowledge. The courts can question or agree to question expert witnesses.

Does your jurisdiction apply a doctrine of equivalents and, if so, how?

Taiwan applies a doctrine of equivalents. In addition to considering the literal scope of a patent claim, a patent’s scope is determined by considering features that that are not substantially different from the technical features of the patent claim.

The following questions are used to determine whether a patent’s features are substantially different:

Are the technical features at issue used to perform substantially the same function and produce substantially the same result as those of the claimed technical features?
Is the difference between the technical features at issue and the claimed technical features obvious to a person skilled in the art?

Is it possible to obtain preliminary injunctions? If so, under what circumstances?

It is possible to obtain preliminary injunctions.

Preliminary injunctions will not be granted unless it can be proved that satisfying the claim by compulsory execution in future will be impossible or extremely difficult. 

How are issues around infringement and validity treated in your jurisdiction?

In Taiwan, the IP Court and Supreme Court can rule on infringements and patent validity simultaneously, even though they are civil courts. The IP Court has recently begun a new practice whereby it first determines the validity of the patent and, if the patent is valid, it then considers the issue of infringement.

However, as IP Court and Supreme Court judgments regarding patent infringement are technically civil, in theory, their judgments on patent validity are binding only in the case at hand, not any other parallel or associated cases. Final binding judgments regarding patent validity are obtained through the administrative system (ie, claims brought through the IP Office to the Supreme Administrative Court).

Will courts consider decisions in cases involving similar issues from other jurisdictions?

Taiwan’s courts seldom consider decisions from other jurisdictions, unless the issues have been codified or well established as precedent. The courts usually hold that it is pointless to consider other decisions as every jurisdiction has a different legal system. Therefore, unless both the issues and legal systems are substantially similar, foreign decisions are useless.

Damages and remedies
Can the successful party obtain costs from the losing party?

The losing party pays all court fees. However, the winning party will bear any other expenses it paid for during the case.

What are the typical remedies granted to a successful plaintiff?

The typical remedies granted to successful plaintiffs are:

  • preliminary injunctions;
  • final injunctions;
  • reasonable fees for pre-grant use between the patent grant date and publication date, or the date on which the defendant was notified of the existence of the patent application and its contents (available only for invention patents);
  • damages for post-grant infringement;
  • court fees and reasonable costs incurred in stopping the patent infringement; and
  • up to treble damages for an intentional infringement.

How are damages awards calculated? Are punitive damages available?

Unless otherwise provided, compensation is limited to the damage actually suffered and the interest actually lost. Interest which could normally be expected (according to the ordinary course of events, decided projects, equipment or other circumstances) is considered the interest that has been lost. If there is no way to prove the amount of damages suffered, a patentee may claim damages based on the difference between the profits earned through infringement and those that could normally be expected through valid exploitation of the patent.

In addition, damages can be determined on the basis of the profits earned by the infringer as a result of the infringement or reasonable royalties.

Punitive damages are available. Where infringement is considered intentional, the court may – on request and on the basis of the severity of the infringement – award damages that are greater than the loss suffered, not exceeding three times the proven loss. 

How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?

Permanent injunctions are a common remedy and the courts will grant them in all cases in which the patent has not expired, unless the parties settle before the court makes such a determination.  

Timescale and costs
How long does it take to obtain a decision at first instance and is it possible to expedite this process?

In general, it takes between six and 12 months to obtain a first-instance decision before the IP court. It is generally not possible to expedite this process. 

How much should a litigant plan to pay to take a case through to a first-instance decision?

On average, $5,000 or more may be needed to take a case through to a first-instance decision.

Appeal
Under what circumstances will the losing party in a first-instance case be granted the right to appeal? How long does an appeal typically take?

In first-instance proceedings before the IP Court, the losing party has the right to appeal before the second-instance IP Court, seeking a full review of the first-instance decision with regard to the facts and legal issues. Appeals are quicker than first-instance proceedings.

Options away from court
Are there other dispute resolution options open to parties that believe their patents to be infringed outside the courts?

In theory, a patent dispute can be resolved through arbitration, although it is seldom used. In addition, licensing agreements or direct or indirect communications between parties may help to resolve disputes.