Ten Frequently Asked Questions about Patent Applications in Taiwan, China (5)

Ten Frequently Asked Questions about Patent Applications in Taiwan, China (5)

1. Is it necessary to submit a revised comparison page between the divisional application specification and the original specification of the invention patent application implemented on May 1, 2023? Is there a fixed format?

• If there are deletions in the divisional application description based on the contents of the original application description, the deleted content should be marked with a "strikethrough". If there is additional content, the newly added text should be underlined to indicate the modified part. .

2. For the divisional application specification and the original specification of the invention patent application implemented on May 1, 2023, a revised comparison page needs to be submitted. Do I need to submit the entire specification?

• If there are only small differences, you can submit only the modified part.

3. The invention name is part of the description. Is it necessary to submit a revised reference page for the invention name in the divisional application?

• unnecessary. If only the invention name in the description is inconsistent with the original application invention name, there is no need to submit a revised comparison page.

4. If only one typo is corrected in the entire manual, do I need to modify the reference page?

• Yes, as long as the description content of the original application is not fully quoted, a revised reference page needs to be submitted.

5. If the applicant does not take the initiative to submit the revised reference page of the divisional application, will the divisional application be rejected?

• In accordance with the relevant provisions of Article 28 of the Implementing Rules of the Taiwan Patent Law, if the description of the divisional application does not fully quote the description of the original application, the first-instance examiner will issue a [Notice of Correction] to the patent application for which the revised reference page of the divisional application has not been actively submitted. Book】.

6. The patent application request letter records that the agent is patent attorney A, and the power of attorney includes three patent attorneys A, B, and C. Will TIPO issue a [Notice of Correction]?

• Won't. The agent named in the request will be the agent for the patent application.
• In addition, according to Article 9 of the Implementing Regulations of the Taiwan Patent Law, the number of agents recorded in the request for each patent application shall not exceed 3.
• If the applicant has entrusted 3 agents and specifically designated other agents to handle a single matter, such as transfer filing, copying and review, interviews, patentability evaluation reports, payment of annual fees, etc., it does not need to be the same as those recorded in the original request. Agents are counted together, but no more than 3 specially designated agents are allowed.

7. For special entrusted matters, is it enough to only state “special entrusted matters listed in Article 10 of the Implementing Rules of the Patent Law” in the power of attorney?

• In order to clarify the scope of agency rights, special entrustments, such as entrustment, termination of entrustment, voluntary withdrawal, division of cases, request for review, application for correction, litigation or abandonment, should be clearly recorded in the power of attorney one by one. If the power of attorney only clearly states "entrustment of special entrustment matters listed in Article 10 of the Implementing Rules of the Patent Law" in the power of attorney, it can also be regarded as being specially entrusted with those matters.

8. For example, if a company in the United States and a company in Taiwan are joint applicants for a patent application, can the U.S. company not want to appoint an agent to handle the application?

• In addition to entrusting an agent to handle patent applications, U.S. companies can also provide documents proving that they have a business location in Taiwan, or select a Taiwanese company to handle related matters.

9. If the applicant receives the authorization notice or rejection notice and wants to go through the procedures for obtaining the patent certificate by himself, what should he do?

• The applicant must submit a request for a patent certificate and pay the patent certificate fee and the first-year annual fee to go through the procedures for obtaining the patent certificate within 3 months after receiving the authorization notice. TIPO will announce and issue a patent certificate within one month after submitting the application for a license.

10. If an applicant in Taiwan entrusts a patent agent to file a patent application and obtain patent authorization and pay an annual fee, will TIPO directly send the patent annual fee payment notice to the applicant?

• In order to prevent the patentee from invalidating the patent due to missing the annual fee payment deadline, TIPO provides a convenient service to remind the patentee to pay the annual fee on time. TIPO will issue a [Patent Annual Fee Payment Notice] 2.5 months before the expiration of the patent annual fee. If the patentee fails to pay the patent annual fee within the 6-month delay period, the patent annual fee will be paid again in proportion to the time limit within the 6-month delay period. Send the [Patent Annual Fee Payment Notice] 2-3 months beforehand to remind the patentee and agent again.
• TIPO will additionally provide email notifications to patentees and agents. The patentee or agent can send an email to TIPO to ipo1p1@tipo.gov.tw and submit the ID number, email address, contact name, contact phone number and fax number to request TIPO to provide only email reminders.