Ten Frequently Asked Questions about Patent Applications in Taiwan, China (3)

Ten Frequently Asked Questions about Patent Applications in Taiwan, China (3)

1. What is priority? What are the categories of priority?

• There are two types of priority: foreign priority and domestic priority. Among them, if the priority is claimed based on a patent application filed by a foreign country or a WTO member state, it is called foreign priority; if a patent application filed in the country is the prior application and priority is claimed, it is called domestic priority.
  Regardless of whether it is a foreign priority or a domestic priority, the subsequent case can be the basic case or the filing date can be the priority date. For patent applications claiming priority, the examination will be based on the priority date.

2. The patentee is a company. If it is merged and acquired, how should the patent rights be handled?

• If a company is merged, the merged company can file a transfer of patent rights with TIPO.
• When filing a patent transfer, the original patentee or assignee should co-sign the rights transfer certificate or merger and acquisition certification documents, etc., submit them to TIPO for filing, and pay a change fee of NT$2,000 (approximately RMB 453).

3. Can anyone apply for a utility model patentability evaluation report? How does a patent owner know that his utility model patent has a patentability evaluation report?

• Yes. Anyone, including the patentee himself, can request a utility model patentability evaluation report from TIPO.
• If a utility model patentability evaluation report is requested by a non-patentee, TIPO will not proactively notify the patentee, but the fact that a patentability evaluation report has been requested for the utility model will be published in the Patent Gazette. The patentee can check the relevant columns of the Patent Gazette to see if a third party has submitted a patentability evaluation report for the utility model patent application, or can learn that it has been submitted when TIPO issues the "Notification Letter of Documents Cited in the Patentability Evaluation Report" If a third party submits a patentability evaluation report on the utility model, TIPO will also notify the patentee when the utility model patent evaluation report is completed.

4. How to obtain a patent certificate? How should the relevant fees be paid?

• The applicant should pay the patent certificate fee and the first-year patent annual fee within 3 months of receiving the authorization notice, and submit a request to TIPO to request a patent certificate.
• How to pay patent fees: Applicants can check the official fee standards, payment methods and make online payments through the TIPO "Online Payment System". The current payment methods for TIPO include:
  • You can pay in cash at TIPO or TIPO's local service offices.
  • Fill out the "Joint Bank Deposit Slip" for deposit payment by bank transfer, wire transfer or online transfer.
  • For checks, money orders, cashier's checks, etc., the date recorded on the bill must not be later than the date of delivery, and the payee should be "Intellectual Property Bureau of the Ministry of Economic Affairs" and "endorsement and transfer prohibited".
  • Postal money transfer.
  • Agreed account withholding.

5. What should I do if there is an error in the name on the patent certificate I received?

• If the name provided by the patentee when filing the patent application is correct, but TIPO records an error on the patent certificate issued by TIPO, the patentee can submit a statement of opinion and attach the wrong patent certificate, and the TIPO will verify the accuracy. If the registration is incorrect, TIPO will re-issue a new patent certificate.

6. How to apply for a meeting with the examiner? Will all meetings be accepted?

• Patent applicants can download an electronic request form or a paper request form on the TIPO website. For a paper request form, you can click on the quick link on TIPO and click on the form No. 22. After filling out the form, stamp the company seal in the blank space and Pay NT$1,000 (approximately RMB 226).
• If the application is via bank transfer, the bank transfer certificate and the request letter need to be sent to TIPO. When receiving the interview request, the examiner will notify the applicant whether to accept the interview depending on the circumstances of the case. In principle, meetings, video meetings or long-distance video meetings will be more often used in patent examinations. However, meetings with the examiner will not be accepted under the following circumstances:
  • For example, it is simply asking whether the patent application will be authorized.
  • Requesting a meeting without raising specific causes of action during litigation.
  • Requesting a meeting for reasons that obviously have nothing to do with the technical content or the circumstances of the case.
  • Have already met and requested to meet again, but the facts of the case are clear.
  • Requesting a remote video meeting does not comply with the requirements of Point 6, Item 3 of the Meeting Operation Points.

7. Does TIPO only accept paper priority certificate documents?

• The priority certification document should be the original issued by the patent management authority of a foreign country or a WTO member state, and cannot be a photocopy, and it cannot be replaced by a copy of the priority certification document notarized or authenticated by a court or other agency. However, when the same applicant claims the same foreign priority in more than two patent applications, if the original copy of the priority certification document has been submitted in one of the patent applications, scanned copies of the priority documents can be submitted for the other patent applications, but they must Indicate the file in which the original copy of the priority is kept.
• If it complies with TIPO's electronic submission method, the priority document can be submitted as a scanned PDF, or only a CD containing a scanned copy of the priority document can be submitted, which is also acceptable to TIPO.
• Priority certification documents from Japan and South Korea can be obtained through electronic exchange.

8. The design has been authorized, can I apply for a derivative design?

• According to Article 127, Item 3 of the Taiwan Patent Law, if the original patent has been authorized and announced, you may not apply for a derivative design of the design. If the original application only has an authorization announcement date scheduled but no authorization announcement, an application for a derivative design of the design can be filed before the authorization announcement date.

9. If the annual fee for the last year of the patent right is less than one year, do I still need to pay the annual fee for the last year?

• Patent annual fees in Taiwan are calculated from the date of grant announcement, while patent rights are calculated from the date of application. Therefore, usually the annual fee for the last year will not be less than one year, and the applicant still needs to pay for the last year. annual patent fees.

10. What are the restrictions on claiming foreign priority?

• If the applicant has filed a patent application for the first time in accordance with the law in a WTO member country or a country that mutually recognizes priority with TIPO for the same invention, it must be within 12 months from the date of the first foreign patent application and 6 months from the date of the design. Within the period, a patent application can be submitted to TIPO.
• To claim foreign priority, the priority date, priority country and priority number must be stated simultaneously with the application.
• Priority certification documents can be submitted to TIPO no later than 16 months from the earliest priority date and designs within 10 months.