In brief: patent prosecution in Taiwan

Scope and ownership of patents

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

Yes, a patent can be obtained to cover software or business methods (under modern computer software architecture, but not including only a business method). However, the following subject matters are not patentable:

• animals, plants and essentially biological processes for production of animals or plants (except for the processes used to produce micro-organisms);
• diagnostic, therapeutic or surgical operation methods for the treatment of humans or animals; and
• any invention that is contrary to public policy, morality or public health.

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a joint venture? How is patent ownership officially recorded and transferred?

Unless the contract provides otherwise, a company owns the patent application right and patent right of its employees’ inventions on works for hire, while the employee is entitled to ask for appropriate compensation and his or her name to be indicated as the inventor. The patent application right and patent right of an employee’s invention other than that as a work for hire shall be vested in the employee provided that, if the invention is made through utilisation of the employer’s resources or experience, the employer may, after having paid the employee a reasonable remuneration, put the same invention or utility model or design into practice in the enterprise concerned.

The patent application right and patent right for an invention made by an independent contractor shall be vested in accordance with the relevant agreement. In the absence of such an agreement, the patent application right and patent right shall be vested in the independent contractor, provided, however, that the fund-provider shall be entitled to put such invention into practice.

Multiple inventors jointly own the patent application rights and must file the patent application jointly.

There is no special rule in the Taiwan Patent Act regarding ownership of a patent on an invention made by a joint venture. Ownership of the patent on such an invention, in general, will be decided through contract.

The ownership and the transfer of patent rights is published by the Patent Official Gazette and recorded in the database of Taiwan’s Intellectual Property Office (TIPO). Unless registered with TIPO, any transfer, trust, licensing, or pledge of a patent cannot be asserted against a third party.

Patent office proceedings

How long does it typically take, and how much does it typically cost, to obtain a patent?

An invention patent typically takes approximately two years to be granted if no Office Action is issued. Typically, official fees from the filing of an application to the receipt of the patent certificate, where no additional office actions were encountered, would start at the basic fee of NT$15,000 (including the filing fee and examination fee), while attorneys’ fees for processing the prosecution vary. However, the examination fee was adjusted on 1 January 2010 and applies to patent applications filed on and after 1 January 2010. The annuity fee was also adjusted and now applies to all applications. The examination fee is calculated based on the number of claims and is not a fixed flat fee. The basic fee is NT$7,000 (NT$1,000 lower than the previous fee), but Taiwanʼs Intellectual Property Office (TIPO) will charge an additional fee if more than 10 claims are made (NT$800 for each further claim). Additionally, if the total number of pages of specifications, claims and drawings in the application exceeds 50 pages, TIPO will charge another additional fee (NT$500 for each page in excess of 50 pages). The annual fee to maintain an invention patent is NT$2,500 for the first three years, and this amount gradually increases over the years.

Are there any procedures to expedite patent prosecution?

Yes, there are two procedures to expedite patent prosecution.

The first is the Accelerated Examination Programme. The applicant can apply for this procedure under the following three conditions:

• the application’s foreign counterpart has been granted under substantive examination by a foreign patent authority;
• the European Patent Office (EPO), Japanese Patent Office (JPO) or US Patent and Trademark Office (USPTO) has issued an office action during substantive examination but has yet to allow the application’s foreign counterpart; or
• the invention application is essential to commercial exploitation.

If the application is proceeding under the condition identified at the final bullet point, then a fee of NT$4,000 will be charged.

The second procedure is the Patent Prosecution Highway. Currently there are three patent authorities cooperating with TIPO: USPTO, JPO and Spanish Patent and Trademark Office. This programme enables an applicant whose claims are determined to be allowable and patentable in the Office of First Filing (OFF) to have the corresponding application filed in the Office of Second Filing (OSF) and advanced out of turn for examination, while at the same time allowing the OSF to exploit the search and examination results of the OFF.

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that should be followed or pitfalls to avoid in deciding what to include in the application?

According to the Patent Act, an applicant shall submit the application form, descriptions, claims, abstract and drawings to Taiwan's Intellectual Property Office (TIPO). According to article 26 of the Patent Act, a description shall disclose the invention in a manner clear and sufficient for it to be understood and carried out by a person ordinarily skilled in the art. A claim shall define the claimed invention, and each claim shall be disclosed in a clear and concise manner and be supported by the description. An abstract shall clearly contain a summary of the disclosed invention. In addition, the manner of disclosure for description, claim, abstract and drawings shall be prescribed in the Enforcement Rules of the Patent Act.

TIPO has also issued the Substantive Examination Guidelines (Guidelines) according to which the TIPO reviews the applications received and decides whether a patent application should be granted. The Guidelines set forth were drafted based on the practices of the USPTO, JPO and EPO, and so their content is quite similar to the international patent prosecution practice. In short, the requirements of utility, novelty and inventiveness play important roles when TIPO reviews the applications. Moreover, the Patent Act clearly stipulates that the claims must be supported by the specification and drawings. If the claims contain features that are not disclosed in the specification or drawings, the application will not be allowed.

Must an inventor disclose prior art to the patent office examiner?

The Enforcement Rules of the Patent Act require an applicant to disclose prior art known to the applicant. According to TIPO, however, failure to disclose will not necessarily affect the validity of the patent, as long as it does not cause persons skilled in the art to be unable to understand the content and how to practise the invention.

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier filed application? If so, what are the applicable requirements or limitations?

A patent applicant may supplement or amend the claims of an earlier filed application, provided that the content of the supplement or amendment does not exceed the scope of the specification or drawings disclosed in the original patent application, except for correction of translation errors.

If the supplement or amendment exceeds the scope of the specification or drawings, then the patent applicant must file a further application based on a prior application filed in Taiwan on which it can claim priority in respect of the invention described in the specification or drawings submitted along with its prior patent application, except in the following circumstances:

• where a period of 12 months has elapsed from the filing date of the prior patent application;
• where a claim for priority right upon a foreign application has been made in respect of the invention or utility model described in the prior patent application;
• where the prior patent application has been divided into divisional applications or has been converted;
• where the examination decision has been made with respect to the prior patent application; or
• where the earlier patent application has been withdrawn or dismissed.

Is it possible to appeal an adverse decision by the patent office in a court of law?

An applicant for an invention patent or a design patent may apply for re-examination against a rejection decision within two months from the date on which TIPO’s decision is served. Unless the application is rejected on procedural grounds or on the ground of an applicant’s ineligibility, the re-examination proceeding is the prerequisite for a later appeal to MOEA, the panel of three judges of the IP Court, and then the Administrative Supreme Court.

Since 2004, this re-examination proceeding no longer applies to utility model patents, as a utility model patent now merely requires a formality examination by TIPO rather than a substantive examination. Thus, an applicant for a utility model patent may directly appeal to Ministry of Economic Affairs (MOEA) against an adverse decision within one month of the date on which TIPO’s decision is served. The MOEA’s decisions may be further appealed to a panel of three judges of the IP Court and finally to the Administrative Supreme Court.

Does the patent office provide any mechanism for opposing the grant of a patent?

No, the Patent Act has abolished the opposition procedure that previously allowed third parties to oppose a grant within three months after the application was published. Now, the only mechanism to protest a patent is to file an invalidation action after the patent is granted.

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same invention? What factors determine who has priority?

Taiwan utilises a first-to-file system, pursuant to the Patent Act. Therefore, when multiple applications are filed for the same invention, TIPO will only grant a patent to the first applicant to file.

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent claims during a lawsuit?

The Patent Act allows patentees to file an application to make amendments to the contents of the specification and drawings only in respect of the following matters: deleting the claims; narrowing the scope of the claims; correction of errors or translation errors; or explanation of obscure descriptions. Any amendment to be made cannot exceed the scope of content disclosed in the original specification or drawings when the patent application was filed, and cannot substantially expand or alter the scope of the patent claims. Upon approval of the amendments, TIPO will publish the cause of such amendments in the Patent Official Gazette. The effect of the amendments on the specification or drawings shall, upon publication, be retroactive to the filing date of the patent application concerned. A patent can be invalidated (revoked) either by an invalidation action filed by any party to, or ex officio by, TIPO.

There is no re-examination proceeding in the sense that any person at any time may challenge the patentability of a patent on the basis of prior art. Rather, re-examination under the Patent Act is the prerequisite for an applicant applying for an invention patent or a design patent to go through the administrative remedial procedure (more information related to re-exmination is described in "Patent office appeals").

The court may not on its own amend the patented claims during a lawsuit.

How is the duration of patent protection determined?

The term of an invention patent is 20 years from the filing date of the patent application. In the event of invention patents covering pharmaceuticals, agrichemicals or processes for preparing the same, a patentee may apply for an extension of the patent term of no longer than five years if, pursuant to other acts or regulations, prior government approval must be secured to practise such patents, which are obtainable only after the publication of the patents. The term of a utility model patent is 10 years from the filing date, while that of a design patent is 12 years from the filing date.

Law stated date

Give the date on which the information above is accurate.

8 April 2021.