SAINT ISLAND INTELLECTUAL PROPERTY GROUP

Taiwan IP Practice

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  • 1
    What are the minimum requirements to obtain an effective filing date? Who is entitled to claim priority?
    1

    Details of the Applicant, including his name, address, and nationality, are required at the time of filing.


    To file an invention patent application or a utility model application, the Applicant needs to submit the specification, the claims, and the drawings.
     

    To file a design application for a three-dimensional design, the Applicant needs to submit drawings or photos illustrating the six views (i.e. front view, left side view, right side view, bottom view, top view and rear view) and the perspective view of the design. To file a design application for a two-dimensional design, the Applicant needs to submit drawings showing the front view and the recurring unit of the design (if applicable). The Applicant may submit auxiliary figures, if necessary.


    Any foreign Applicant, whose country of origin is a WTO member or who has a domicile or a place of business within the territory of a WTO member country, is entitled to claim priority in Taiwan based on his invention patent or utility model application first filed in any member country of the WTO within 12 months (or 6 months in case of a design application) of the filing date in Taiwan. When claiming priority, it is advisable to indicate the filing date and serial number of the basic priority application at the time of filing.
     

  • 1
    What is the deadline for filing a substantive examination request and how much is the official fee?
    1

    The Applicant must file a substantive examination request within 3 years from the filing date; otherwise the application shall be deemed to be withdrawn. The Applicant can concurrently submit amendments when filing the request.
     

    The basic official examination fee is NT$7,000, an excess claim fee of NT$800 is applied to each claim in excess of 10, and a Chinese specification size fee of NT$500 is applied to each additional 50 pages of the Chinese specification.

  • 1
    When will an invention patent application be laid open to the public?
    1

    An invention patent application filed in Taiwan shall be laid open to the public for inspection after 18 months from the filing date (or the priority date where applicable).


    When necessary, the Applicant can request early publication of his application with payment of an applicable official fee.
     

  • 1
    When can the Applicant file a divisional application?
    1

    The time limit to file a divisional application is within 3 months from receipt of the Notice of Allowance. Moreover, filing a divisional application is permitted even if and when the Notice of Allowance is issued at the reexamination stage.
     

    In addition, the Applicant is allowed to submit the claims and pay the official fees on a belated basis.
     

  • 1
    How long is the duration term of a patent?
    1

    The duration term of an invention patent is 20 years, that for a utility model is 10 years, and that for a design patent is 15 years, calculated from the filing date and effective from the publication date.

  • 1
    What are the documents required of an assignment recordal?
    1

    1.a photocopy of an Assignment Deed co-executed by the Assignor and the Assignee or a photocopy of an Assignment signed by the Assignor; and

    2.a photocopy of a Power of Attorney signed by the Assignee.
     

    The documents require neither notarization nor legalization. In case of a merger, a photocopy of the Certificate of Merger issued by the competent authority is needed.
     

  • 1
    What kind of patent is eligible for patent term extension?
    1

    When a patent claims a pharmaceutical or agrochemical composition, a method of manufacturing the pharmaceutical or agrochemical composition, or a specific use of the pharmaceutical or agrochemical composition, the patent is eligible for patent term extension. Note that the pharmaceutical and agrochemical compositions mentioned above do not include those for veterinary use.

  • 2
    What is the deadline for filing an application for patent term extension?
    2

    The application shall be filed within 3 months from the date of issuance of the first certificate of marketing approval and no later than 6 months prior to the expiration date of the patent.

  • 2
    What are the documents required of a name change recordal?
    2

    A photocopy of the Certificate of Name Change issued by the competent authority is the only document required.

  • 2
    When will the Patentee receive the Letters Patent after conducting payment of the issue fee and the first annuity?
    2

    After conducting payment, the Patentee may expect to receive the Letters Patent in about 30 days.

  • 2
    What the Applicant needs to know when planning to file a divisional application?
    2

    Since a divisional application, once filed, will be at the same examination stage as the parent application, it is generally advisable to file the divisional application as soon as possible so that the Applicant may have more chances to address the issues raised by the Examiner.
     

    The Applicant must file a substantive examination request for the divisional application within 3 years from the filing date of the parent application, or within 30 days from the date of filing the divisional application if the three-year time limit has passed.
     

    Further, there is no limit on the number of divisional applications as long as the disclosure of the divisional application(s) can find support from the parent application.
     

  • 2
    If the patent application is withdrawn, will it still be laid open to the public for inspection?
    2

    The application will not be laid open only if the withdrawal petition is filed within 15 months from the filing date (or the priority date where applicable).

  • 2
    Is the deadline for filing the examination request extendable? If the Applicant fails to timely file the request, is there any remedy to revive the application?
    2

    The statutory deadline is not extendable. There is not any legal remedy to revive the application if the examination request is not filed by the deadline.

  • 2
    Is it necessary to submit a Chinese-translated specification to obtain an effective filing date?
    2

    No. The Chinese-translated specification can be submitted on a belated basis, i.e. within 4 months from the filing date, and a 2-month time extension is obtainable, if necessary.
     

  • 3
    What is the deadline for submitting the priority document?
    3

    The deadline for submitting the priority document is 16 months (for invention and utility model applications) or 10 months (for design applications) from the earliest priority date, with no time extension available. 


    In case of claiming priority to a Japanese or Korean application, the Applicant need not submit the priority document. The Taiwan IP Office (TIPO) can obtain the document from JPO or KPO electronically.
     

*The above contents are intended as general discussion of the subject matter only and shall not be deemed as legal advice to any particular case or issue.