Ten Frequently Asked Questions about Patent Applications in Taiwan, China (2)

Ten Frequently Asked Questions about Patent Applications in Taiwan, China (2)

1. When submitting a request for substantive examination of an invention patent application, can a PPH request be submitted at the same time? If you need to make proactive changes at the same time, how should you handle it?

• The timing of filing a PPH request must be after the applicant has received the notice of entry into substantive examination from TIPO and the first examination action notice has not yet been issued for the patent application. If the timing of submitting PPH is wrong, the PPH request will not be accepted by TIPO. Therefore, you should first submit a request for substantive examination, and then submit a request for PPH and make active modifications to the PPH at the same time after receiving the notice of entry into substantive examination.

2. Our company has a patent that has been authorized. The patent applicants are from two companies, but they only received one patent certificate. What should we do if both patent applicants want patent certificates?

• The patent certificate is to prove the existence of the patent right. After paying the certificate fee and patent annual fee, each authorized patent will enjoy the patent right from the date of the authorization announcement. Only one patent certificate will be issued for each patent right.
• If two joint patentees require patent certificates, the applicant is required to coordinate on their own or through the TIPO query system to prove that the joint patentees simultaneously enjoy the patent rights.
• In addition, since TIPO has implemented electronic patent certificates, after the applicant receives the electronic certificate, the applicant can also apply for a paper patent certificate. After filling out the [Request Form for a Copy of Patent Certificate], the applicant must pay the official fee of NT$1,000.00 (approximately NT$1,000.00). (total RMB 225.6). There is no limit to the number of paper certificate requests and can be obtained according to the company's own needs.

3. The patent applicant is a foreign legal person. Now the applicant’s name has changed, but the entity has not changed. How to change the name? How much is the official fee?

• When the patent applicant is a foreign legal person and needs to change his name, he should submit relevant certification documents issued by the competent authority of the applicant's country and pay the official change fee of NT$300.00 (approximately RMB 67.67).
• If relevant supporting documents issued by the competent authority cannot be provided, the applicant can submit a name change statement, explaining the fact of the company's name change, the reasons for being unable to provide supporting documents, and stating that it bears all legal responsibility for the change. If the applicant only changes the Chinese translation of the applicant's name and the foreign name remains unchanged, there is no need to submit supporting documents from the competent authority.

4. Does the power of attorney need to be notarized? Are there any rules for writing format?

• The power of attorney does not need to be notarized, as long as the principal and the principal express their intentions clearly. When the applicant appoints an agent, the power of attorney submitted should state the authority of the agent and the address for delivery of official documents. The power of attorney should be signed by the applicant and the agent. If the power of attorney only has the signature of the principal (applicant), but the agent has signed the request, it can be deemed that both parties agree. In this case, the power of attorney only contains the signature of the applicant. It only needs the signature and seal of the principal.

5. Can the virtual account on the patent annual fee payment request be reused? Can the virtual account still be useful after the payment period has expired? Will the recipient get a different virtual account depending on his or her identity?

• The virtual account can only be used once, and the virtual account is used to match the payment terms of different patent cases. The payment account number and payment amount are exclusive to the payment of the fee and cannot be used repeatedly, nor can it be used for other patent applications, such as If the payment time is exceeded, other payment methods will be used.
• In addition, TIPO's patent annual fee reminder notice is of a service nature and will in principle be sent to the patentee (if the patentee is not from Taiwan, China, only the agent will be notified), agent, contact person and bankruptcy administrator. Different The identity notification contains different virtual accounts. TIPO will send an official receipt to the address registered by the payer after reconciliation.

6. If TIPO believes that a patent application cannot be patented, will it give the applicant a chance to explain? If there is an opportunity for clarification, what is the response time? Can it be extended?

• If TIPO finds after review that there are reasons why the patent application cannot be patented, TIPO will issue a notice of examination opinion and notify the applicant to respond within a time limit to overcome the shortcomings of being unable to apply for a patent. When submitting the reply, an initiative must be submitted at the same time. Modification: Although the applicant has overcome all the non-patentable reasons in the notification when replying or making voluntary modifications, if a new reason for not being able to apply for a patent arises due to the voluntary modification, and the new reason is caused by the applicant, TIPO will issue a final notice of examination opinion to limit the scope of claims of the patent application in order to achieve the purpose of quickly closing the case.
• The deadline for replying to the examination opinion notice is as follows:
  • For foreign applicants, 3 months, which can be extended once, with a total of no more than 6 months;
  • For applicants from Taiwan, the application period is 2 months and can be extended once, up to a total of no more than 4 months.

7. How long is the patent right for a utility model? If the patentee fails to pay the annual fee for more than 6 months, when can I see the information about the termination of the patent right?

• The start of patent rights is from the date of authorization announcement when the patent application is authorized, while the expiration date of utility model patent rights is 10 years from the date of application. Invention patents last for 20 years and design patents last for 15 years.
• If the patent annual fee is not paid before the expiration of the late payment period after the second year, the patent right will be terminated after the original payment period expires. In principle, TIPO will announce the termination of the patent right two months after the expiration of the delay period and publish it in the Patent Gazette. Therefore, information about the termination of patent rights can be seen on the TIPO official page approximately 8 months after the original payment period.

8. If a power of attorney is not submitted when applying for a patent, can the date of signing the power of attorney be later than the date of application when subsequent corrections are made? In addition, can the agent withdraw the patent application before amending the power of attorney?

• A power of attorney is a contract between the principal and the trustee, as long as both parties have the same intention. Therefore, if the signing date is later than the patent application date, it is usually acceptable.
• The agent cannot withdraw the patent application before correcting the power of attorney. Since the agent's entrusted authority also includes withdrawing the patent application, the agent should first correct and submit the power of attorney, and TIPO will confirm whether it has the authority to withdraw the patent application.

9. What should I do if I add or delete an inventor but cannot find the original inventor to sign the consent form? Can the order of inventors be adjusted?

• If it is impossible to obtain the inventor's signed consent document due to illness, death, or inability to contact the inventor, the applicant needs to provide a declaration. The declaration must state the name of the invention, the name of all the inventors, and the inability to provide supporting documents. reasons, and declare that they bear all legal responsibilities.
  The order of inventors can also be adjusted by submitting a request to explain the situation.

10. Can the name of the applicant or inventor use Japanese, Korean or simplified Chinese characters?

• Currently, TIPO is based on the dictionary developed by the Taiwan Education Department for the words used in patent applications. However, as for the name of the inventor, according to Article 2, Item 1 of the Taiwan Name Regulations: the name registered in the household registration should be used by the Ministry of Education. All words in the compiled Mandarin Dictionary, Cihai, Kangxi and other general dictionaries. Therefore, any text in the above dictionary can be accepted by TIPO. As for how to convert simplified Chinese characters or Japanese and Korean characters into traditional Chinese characters, TIPO will respect the applicant's wishes and there is no unified translation method. If it is difficult to change the name of the applicant or inventor, TIPO relaxes the examination standards for the name of the applicant or inventor based on respect for the way the name of the party is expressed, and simplified Chinese characters, Japanese and Korean characters, etc. can be used. However, Japanese, Korean and Chinese characters shall not be used in the description, abstract and claims.