Patent Rules

Abridged English Version of the Enforcement Rules of Patent Law

Article 001 ~ Article 056

Article 1 Objectives
These Rules are prescribed pursuant to Article 137 of the Patent Law (hereinafter referred to as "this Law").

Article 2 Application documents

Any application filed in accordance with the provisions of this Law, except for those filed electronically pursuant to Article 19 of this Law, shall be in writing and bear the signature or seal of the applicant or the patent agent appointed by the applicant. If deemed necessary, the Patent Office may notify the applicant to submit a certificate of identity/nationality or a certificate of corporation.

All written applications filed according to this Law or these Enforcement Rules shall use the application forms designated by the Patent Office; the format of the application forms and number of copies to be filed shall be prescribed by the Patent Office.


Article 3 Language

Where the Chinese translation of a scientific term has been adopted and published by the National Institute for Compilation and Translation, such official translation shall be used. Where the official translation is not available or where it is deemed necessary, the Patent Office may request the applicant to annotate the translated term with the term in the original foreign language.

All patent and patent-related application documents submitted shall be in the Chinese language. Where the supporting documents are in a foreign language, the Patent Office may, as it deems necessary, notify the applicant to submit a full text or an abridged Chinese translation thereof.


Article 4 Supporting documents

All supporting documents required by this Law or these Rules for submission shall be originals.

The applicant may submit photocopies of the supporting documents instead of the originals upon verifying that the photocopies are exact copies of the originals. However, where the evidentiary documents submitted in an invalidation proceeding are photocopies, the applicant shall prove that the photocopies are exact copies of the originals.

After having verified the correctness of the original documents submitted, the Patent Office may return the original documents to the applicant.


Article 5 Date of receipt of the application documents by the Patent Office

Where the patent application documents are filed in writing, the date of receipt of the documents by the Patent Office shall be the date on which the documents or articles reach the Patent Office. However, where the documents are sent by registered mail, the mailing date on the postmark shall serve as the date of receipt of the documents.


Article 6 Request for time extension

Prior to expiry of a time limit designated pursuant to this Law or these Rules, an applicant may file with the Patent Office a request for a time extension accompanied by reasons therefor.


Article 7 Recordation of change of name and address

Whenever there is any change in an applicant's name, registered seal or chop, or domicile/residence or place of business, an application for recordal of such change shall be filed with the Patent Office, accompanied by the relevant document certifying the change. However, where the change to be recorded is of a nature that need not be proved by documentation, submission of the relevant document may be spared.


Article 8 Scope of authorization conferred upon patent agent

Where an applicant has appointed a patent agent to act on his behalf, the applicant shall submit a Power of Attorney specifying the power conferred upon said agent and the address for service of all communications.

An applicant shall appoint no more than three patent agents.

Where two or more patent agents are appointed by an applicant, they may act on behalf of the applicant severally.

Where an agent is appointed on a basis other than the provision of the preceding paragraph, said agent may still act on behalf of the applicant severally.

A patent agent may, with the consent of the applicant, appoint another as a subagent.

Whenever there is any change in the scope of authorization conferred upon a patent agent or change of agent, unless the applicant has informed the Patent Office of the change in writing, such change shall not have effect vis-a-vis the Patent Office.

Whenever there is any change in the patent agent's address for service or registered seal or chop, an application for recordal of such change shall be filed with the Patent Office.

The applicant may submit to the Patent Office an authorization appointing a third party as his representative to receive all communications.


Article 9 Application documents; delay in meeting time limits

Where the application documents submitted do not comply with the requirements of this Law and rectification is required, the Patent Office shall notify the applicant to make amendment or supplement within a specified period of time. In the event of the applicant's failure to do so within the designated period of time or the application documents after supplement are still incomplete, the application shall be processed in accordance with the provision of the first paragraph of Article 17 of this Law.


Article 10 Reinstatement of application or procedure

Whenever an applicant seeks, pursuant to the second paragraph of Article 17 of this Law, to restore an application to the previous situation, a written petition specifying the cause for delay and the facts and date of the cessation of the cause, accompanied by documentary evidence, shall be submitted to the Patent Office.


Article 11 Priority period

The time frame of twelve months prescribed in the first paragraph of Article 27 of this Law shall be calculated from the next day of the filing date of the first foreign application to the filing date prescribed in the third paragraph of Article 25 of the same Law.

The time frame of six months prescribed in the second paragraph of Article 129 of this Law shall be calculated from the next day of the filing date of the first foreign application to the filing date prescribed in the third paragraph of Article 116 of the same Law.


Article 12 Correction of title holder

Where correction of the entitled patent applicant pursuant to Article 10 of this Law is intended, an application accompanied by a settlement agreement on the ownership of the right to apply for a patent or the relevant documentary evidence shall be filed with the Patent Office.

Where correction of the entitled patent owner pursuant to Article 10 of this Law is intended, an application accompanied by a settlement agreement on the ownership of the patent right or the relevant documentary evidence and the Letters Patent shall be filed with the Patent Office.


Article 13 Change of ownership of a patent application

Where there is a change of ownership of a patent application by virtue of assignment or inheritance, an application for recordal of such change shall be filed with the Patent Office, accompanied by the following documents:

1. in the case of assignment, the Deed of Assignment or the evidentiary document from the Assignor. However, in the case that the transfer of ownership is due to merger or acquisition of the applicant company, the document evidencing the merger or acquisition shall be submitted.
2. in the case of inheritance, the certificates of death and inheritance.


Article 15 Invention and Utility Model patent applications: specification

-----
Where an invention for which a patent is sought relates to biological material or use of biological material, the applicant shall specify the deposit date, number, as well as the name of the domestic depository; if a deposit has been made in a foreign country prior to filing, the deposit date, number, as well as the name of the international depository shall be specified as well. If the biological material is exempted from deposit requirement, the applicant shall specify the origin from which the biological material is accessible.
-----
If deemed necessary, the Patent Office may notify the applicant to submit within a designated period of time the search report or examination report of the foreign corresponding application (in case of no priority being claimed) referred to in Item 5 of the first paragraph. In the event of the applicant's failure to specify the filing date and serial number of said foreign corresponding application or submit the search or examination report thereof, the application will be examined based on the materials on file.
-----


Article 17 Description of the invention/utility model

Where an invention contains one or more nucleic acid or amino acid sequences, the applicant shall include in the description of the invention the sequence listing, as a separate part of the disclosure, using the format prescribed by the Patent Office, and may submit the data in electronic form.

Where an invention for which a patent is sought relates to biological material or use of biological material, the description shall specify the scientific name, bacterial characteristic and the necessary gene map of the biological material.


Article 18 Claims

A dependent claim may only refer to an independent claim or dependent claim(s) previously set forth. However, a multiple dependent claim shall not serve as a basis for any other multiple dependent claim, either directly or indirectly.


Article 20 Invention and Utility Model patent applications: drawings

Drawings of an invention or utility model shall be drawn in compliance with industrial drafting methods in such clear manner that the drawings when reduced in size to two-thirds would still enable each element on the drawings to be clearly distinguished.

The drawings shall contain figure numbers and reference numbers of the elements. The drawings shall not contain any explanatory words, except where they are indispensable for annotation purposes.

The figures shall be arranged in order of their number, with the designation of a representative figure that best illustrates the features of the invention or utility model.


Article 21 Missing description or drawings

Where parts of the specification or drawings are missing, the filing date of the patent application shall be the date on which the missing parts of the specification or drawings are supplemented. However, if the supplemented information has been disclosed in the prior application from which priority is claimed, the original filing date shall remain unchanged.


Article 22 Priority document

The certified document for the corresponding foreign patent application filed according to the second paragraph of Article 28 of this Law shall be original and shall not be substituted by a photocopy.


Article 32 Design patent application: specification and drawings

The title of the design shall clearly designate the particular article embodying the design without including any irrelevant words. Where the design is a component of an article, the name of the article shall be specified.

The description of the design shall specify the intended use of the article embodying the design and the features of the design. Where the characteristics of the materials used and variations in the spatial arrangement or in the state of use will result in a change of the appearance of the article disclosed in the drawings, a brief description thereof shall be given.

The drawings of the design shall mark the view of each figure. When there is any omission of the required views for being identical or symmetrical to other views or for other reasons, the description of the drawings shall include an explanation of the omission.


Article 33 Design patent application: requirements for drawings

The drawings of the design shall include the perspective view and six plan views (front view, rear view, left side view, right side view, top view and bottom view), or two or more perspective views. Where the design is of a unit-recurring nature, the drawings shall include a plan view and a recurring unit drawing.

Auxiliary drawings to the views referred to in the preceding paragraph may be additionally submitted.

The drawings shall be ink drawings composed of solid black lines drawn in accordance with industrial drafting method, or be photographs or computer printouts clearly showing the design. When the color is claimed, a drawing showing the color(s) on the article shall be additionally submitted along with an indication of the industrial color codes for all of the colors claimed or a color chart.

Any figure disclosing features that are not claimed by the design shall be marked as reference figure. In the event of a reference figure, it shall be described in the description of the drawings when necessary.


Article 36 Associated Design patent applications

When a patent application is filed for an associated design, the application form shall specify the filing number of the parent design patent application, and be accompanied by a copy of the specification and drawings of the parent design application.

The Patent Office shall issue a Notice of Allowance to the associated design patent application only after the parent application is allowed. The grant of a patent to an associated design shall be annotated on the original Letters Patent of the parent design.


Article 40 Application for recordation of assignment

Application for recordation of assignment and issuance of a new Letters Patent shall be filed by either the patentee or the assignee by submitting an application form and the Letters Patent, accompanied by a deed of assignment or other document evidencing the assignment.

Where the assignment is due to merger or acquisition of the company, the accompanying document referred to in the preceding paragraph shall be the document evidencing the merger or acquisition.


Article 42 Application for recordation of license

Application for recordation of license shall be filed by either the patentee or the licensee by submitting an application form, accompanied by the licensing agreement or other evidentiary document.

The licensing agreement or evidentiary document referred to in the preceding paragraph shall specify the licensed portion of the patent, the territory within which the patent is licensed, and the duration term of the license which shall not exceed the duration term of the patent.


Article 43 Recordation of patent-related pledge

Application for recordation of the establishment of a pledge on a patent right shall be filed by either the patentee or the pledgee by submitting an application form and the Letters Patent, accompanied by the following documents:

1. for recordal of establishment of a pledge, the contract of pledge;
2. for recordal of alteration of a pledge, the evidentiary document of alteration;
3. for recordal of cessation of a pledge, the evidentiary document of the payment of the debt or the consent of the parties involved to obliterate the pledge.

The contract of pledge referred to in Item 1 of the preceding paragraph shall specify the title of the invention or utility model or the article embodying the design, the patent number and the amount of the debts. The duration term of the pledge shall not exceed the duration term of the patent concerned.

Whenever the application for recordation as referred to in the first paragraph has been approved, the Patent Office shall indicate the recorded matters on the Letters Patent and in the register of patents.


Article 44 Recordation of inheritance of patent

Application for recordation of inheritance of a patent and issuance of a new Letters Patent shall be filed by submitting an application form along with the certificates of death and inheritance and the Letters Patent.


Article 56 Request for deferred publication

If deemed necessary, the applicant may, at the time of paying the issue fee and the first annuity, file a request with the Patent Office for deferred publication along with the reasons therefor. The deferment is possible up to a maximum of three months.