How do you get a patent in your jurisdiction?
Q: What types of patent are granted in your jurisdiction, and what rights do they confer on owners?
Three types of patent are granted in Taiwan:
- inventions;
- utility models; and
- designs.
A patentee of an invention patent or a utility model patent has an exclusive right to prevent others from exploiting it, including the making, offering for sale, selling, using or importing the invention or utility model. A patentee of a design patent has an exclusive right to prevent others from exploiting the design or similar designs.
Q: What inventions are eligible for patent protection in your jurisdiction?
An invention is patentable if it meets the requirements of novelty, inventive step and industrial applicability.
Q: Are there any specific exemptions to patent eligibility?
Under the Taiwan Patent Act, the following subject matters are ineligible for patent protection:
| Statutory exclusion | |
|---|---|
|
Invention patent |
|
|
Utility model patent |
|
|
Design patent |
|
Q: Are there technology-specific eligibility issues that applicants must navigate (eg, in software, business methods, AI, medical diagnostics, pharmaceuticals, medical procedures, etc)?
Subject matter that falls into one of the above categories will not be eligible for patent protection, and applicants must therefore determine when they would like to patent an invention involving any one of the subject matters.
AI-generated works are currently considered ineligible for patent protection as determined by Taiwan case law.
Q: What are the time and costs involved in securing a granted patent? Is expedited examination available? Are reduced fees available for certain applicants?
| Average times and costs for patent prosecution | ||
|---|---|---|
| Official costs | ||
|
Invention patent |
14 to 20 months |
Application fee: NT$3,500 (approximately US$116.7) Substantive examination fee: NT$7,000 (approximately US$ 233.3) |
|
Utility model patent |
Four to six months |
NT$3,000 (approximately US$100) |
|
Design patent |
Eight to 12 months |
NT$3,000 (approximately US$100) |
Applicants may file a request for expedited examination or accelerated examination in one of the following circumstances:
- the corresponding application has been approved by a foreign patent authority under substantive examination;
- the EPO, the Japan Patent Office or the USPTO has issued an office action during the substantive examination but has yet to approve the application’s foreign counterpart;
- the invention application is essential to commercial exploitation;
- the invention is related to green technologies; or
- based on the patent prosecution highway programme.
When an application is not filed in English, the application fee may be reduced by NT$800 if the name of the invention, the name of the applicant, the name of the inventor and the abstract are accompanied by an English translation in the application. Also, the fee is reduced by NT$600 per application for patent applications filed electronically.
Q: What are any specific requirements that a patent specification must meet in your jurisdiction?
A patent specification must include the claim, an abstract and the necessary drawings. The following items must also be included in the specification:
- title of the invention;
- technical field;
- prior art – indicate the prior art known to the applicant, where relevant materials reflect such art, the materials may be submitted;
- summary of the invention – disclose the problem that the invention aims to resolve and its technical solution adopted to solve the problem, and state any advantageous effects of the invention with reference to the prior art;
- brief description of the drawings – where the description is accompanied by a drawing, a description of the drawing must be made concisely according to the drawing sequence;
- description of the embodiments – describe at least one method of carrying out the invention, use examples where appropriate and refer to the drawings, if any; and
- reference signs list – where the description is accompanied by drawings, major reference signs of the drawings must be listed and illustrated according to the drawing sequence or reference signs sequence.
Q: What rules govern the filing of provisional applications, continuations or continuations-in-part, divisionals, or any other special type of application?
The governing rules are those stipulated by:
Q: What do applicants need to know about office actions and patent examiner interviews?
When examining a patent application for an invention, the TIPO may, on request or of its own initiative:
- notify the applicant to appear before the TIPO for an interview;
- notify the applicant to perform necessary experiments or to submit models or samples within a specified period – the TIPO may, when necessary, visit the site or a designated place to inspect the experiments performed or models or samples to be submitted; and
- notify the applicant to amend the description, claims or drawings within a specified time.
Except for the correction of translation errors, no amendment will extend beyond the scope of content disclosed in the description, claims or drawings as filed.
Q: Are there any recent examination trends that patent applicants need to be aware of?
The TIPO published an amendment to the Examination Guidelines. The amendment entered into effect on 14 July 2021 and provides clearer, stricter standards in terms of the specification and claims amendment.
Examiners used to be likely to issue several notices to the applicant for supplemental clarifications or explanations to the application before rendering a rejection. However, recently, the trend has been that examiners may reject an application after only one notice for clarification if the examiner finds the clarification submitted by the applicant is not responsive or supportive.
Q: Is there anything else about the patent filing process that applicants should know?
Priority
Where an applicant has first applied for a patent in a foreign country (which reciprocally allows Taiwan nationals to claim patent priority) or with any member of the World Trade Organisation, the applicant may claim priority in respect of a Taiwan patent application for the same invention if the Taiwan patent application for the same invention is filed within 12 months of the filing date of the first foreign patent application.
When an applicant applies both for an invention patent and a utility model patent based on the same work
An applicant filing a patent application for an invention and a patent application for a utility model for the same work on the same date must make respective declarations in each application. If the patent application for the utility model is granted before an approval decision on the patent application for the invention is rendered, the TIPO will notify the applicant to make a selection within a specified period. The patent application for the invention will not be granted if the applicant fails to make such declaration or selection within the specified time.
Is utility model or petty patent protection or an equivalent available in your jurisdiction? If so, how does the system work and under what circumstances would you advise using it?
Yes, a utility model patent is eligible for patent protection in Taiwan. Under the Taiwan Patent Act, a ‘utility model’ is a creation of technical ideas relating to the shape or structure of an article or combination of articles, utilising the laws of nature. The TIPO will conduct a formality examination of a patent application for a utility model only, and will not conduct a substantive examination.
While it is easier and more cost-efficient to obtain a utility model patent compared to an invention patent, the term of a utility model patent (10 years from the filing date) is shorter than that for an invention patent. Also, there is a specific restriction on the enforcement of the rights of the patentee of a utility patent. When exercising a utility model patent, the patentee is not permitted to send a cease and desist letter to alleged infringing parties without presenting a technical evaluation report of the utility model patent. Therefore, a utility model is preferable to inventions with shorter lifecycles and or involving simpler technologies.
What are the major administrative procedures in your jurisdiction?
Q: How can applicants appeal patent office decision?
An applicant who disagrees with a TIPO final ruling on a patent matter can file an administrative appeal to the Administrative Review Board of the Ministry of Economic Affairs (MOEA), requesting board to reconsider the TIPO decision. The applicant can bring the same matter before Taiwan’s IP Court if they subsequently fail to receive a favourable ruling from the MOEA Review Board.
Q: Are oppositions available pre-grant or post-grant? What rules govern standing to oppose a patent and the opposition process?
Currently, there is no opposition proceeding available to prevent a pre-grant patent application from being granted a patent. Nonetheless, anyone can file a submission to the TIPO if they would like to object to a particular patent application after it has been published by the TIPO. If the TIPO still grants the patent, however, the person who filed the submission may not challenge the TIPO’s approval by filing an administrative appeal. On the other hand, the said person can file an invalidation action with the TIPO against the granted patent.
Q: What are the processes for re-examination of a patent?
An applicant of an invention patent or a design patent may request the TIPO to re-examine their application within two months of the application being rejected. The TIPO will assign examiners who have not participated in its previous examination proceeding to look into the re-examination application. In certain circumstances, during the re-examination process the applicant is allowed to file an application to modify the application.
Q: What is the process for invalidation or revocation of a patent? Who has standing to request invalidation? How long do inter partes invalidation take?
Anyone can file an invalidation action with the TIPO against a granted patent, on the grounds that the patent fails to meet any of the statutory requirements for an invention to be accorded patent protection. Nonetheless, if a party wishes to challenge a granted patent on grounds relating to ownership disputes, they can file an invalidation action on such grounds only if they establish that they have an interest in making this claim.
An invalidation action will be reviewed by TIPO examiners. An interview with the examiners can be held if requested by the parties.
It usually takes 18 months to two years for the TIPO to render a ruling in an invalidation action.
Q: Is administrative enforcement of patents possible?
Patentees in Taiwan must initiate infringement litigation proceedings at the IP Court or other district courts with proper jurisdiction if they would like to enforce their Taiwan patents.
Q: Does your jurisdiction grant patent-term extensions?
Under Article 53 of Taiwan’s Patent Act, a patentee of an invention involving a pharmaceutical, agrichemical or manufacturing process may apply for an extension of the patent term due to a delay in obtaining the required regulatory approvals from the authorities concerned. The TIPO will review and grant a patent-term extension after finding the patentee’s application meets the requirements set out in the Patent Act.
After a patent-term extension is granted by the TIPO, anyone can request that the TIPO cancel the extension on the grounds that the practice of the patent for which the term is extended requires no regulatory approval from any authorities, or on other grounds as set out in Article 57 of the Patent Act.
Q: Is there anything else about patent administrative procedures that patent owners and challengers should know?
A proposal has been issued by the TIPO for the purpose of restructuring Taiwan’s patent-related review and administrative appeal proceedings. The proposal, if passed, will have a profound effect on Taiwan’s patent practice. Monitoring of future developments in this regard will be required.
Yulan Kuo, Jane Wang, Brian Hsieh, Li-Ying Lin
Formosa Transnational
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