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

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

1. Can I apply for a reissue of a patent certificate if it is lost? Is the reissued patent certificate the same as the original?

• If the patent certificate is lost, the applicant can apply for a new patent certificate by filling out the "Patent Certificate Reissue Request Form" and paying the official fee of NT$600 (approximately RMB 136). The reissued patent certificate is the same as the original patent certificate except for the word "reissue" marked on the date of issuance.

2. When an applicant applies for a priority certificate after the patent application right is transferred, is the applicant for the priority certificate the original applicant or the applicant after the transfer?

• If a patent applicant first goes through patent transfer procedures with TIPO and then requests a priority certificate, TIPO will issue a priority certificate with the applicant as the assignee after the patent transfer procedures are filed.

3. Can the patent owner still pay the annual patent fee by himself if he has appointed an agent? How to do it? Will TIPO send a notice to the patent owner?

• Yes. TIPO currently has seven payment methods: cash, check, postal remittance, automatic deduction from deposit account, online payment, payment of annual fee with virtual account, and face-to-face payment.
• TIPO has no obligation to remind patent owners to pay annual fees, but in order to avoid patent owners losing their patent rights due to missing the annual fee payment deadline, it provides special reminders for patent owners to pay annual fees on time. TIPO will send a "Patent Annual Fee Payment Notice" to the agent and patent owner at the same time about 2.5 months before the patent annual fee is due, and the patent owner can pay the fee directly after receiving the notice.

4. The patent applicant wants to withdraw the patent application, but it is still within 15 months after the application date. Can the patent disclosure be avoided after the withdrawal of the patent application? Can a third party learn the content of the patent application through case query and copying?

• According to the relevant provisions of Article 37, Paragraph 3, Clause 1 of the Taiwan Patent Act, if an invention patent application is voluntarily withdrawn within 15 months from the date of application, the patent application will not be made public.
• According to the relevant provisions of Point 3, Paragraph 3 of the Key Points for Patent Search and Copying, only the parties themselves can search and copy invention patent applications that have been actively withdrawn, not accepted, or rejected, and have not been made public.

5. If the patentee fails to pay the annual fee within the 6-month period, can anyone other than the authorized agent help the patentee pay the annual fee? Is it necessary to change the agent?

• In principle, anyone can pay annual patent fees without any qualification restrictions.
• If a patent application has been entrusted with an agent, the subsequent patent owner can pay the annual fee by himself. The agent who is not the original patent application can also help the patent owner pay the annual fee by changing the agent or special entrustment.

6. If the patent application fee is paid repeatedly or incorrectly, can I apply for a refund by filing an electronic application?

• No. The refund request must be accompanied by the original paper receipt issued by TIPO. This receipt must be mailed or handed in to TIPO together with the refund request form. Therefore, the refund request cannot be processed through electronic application. If the receipt is electronic, the refund can be processed through electronic application.

7. How much is the official fee for invention patent application and how long does the examination take?

• The application fee for invention patents is NT$3,500.00 (approximately RMB 800). Electronic applications can be reduced by NT$600.00 for each application. If the invention title, applicant name, inventor name and abstract of the submitted invention patent application are accompanied by an English translation, the application fee can be reduced by NT$800.00.
• If a substantive examination is requested for an invention patent, the total number of pages of the specification, claims, abstract and drawings is within 50 pages, and the number of claims does not exceed 10. The application fee for each patent application is NT$7,000.00; if the number of claims exceeds 10, an additional NT$800.00 will be charged for each claim; if the total number of pages of the specification, claims, abstract and drawings exceeds 50 pages, an additional NT$500.00 will be charged for every 50 pages; if the total number of pages is less than 50, it will be calculated as 50 pages.

TIPO has different examination times for different patent applications based on different technical fields, as shown in the figure below: 8. What should be done if the name of the applicant of a company established in mainland China changes after applying for a patent?

• For applications outside Taiwan, China, if the applicant's name is changed, a request for change of bibliographic item should be submitted, and an official change fee of NT$300.00 (approximately RMB 68) should be paid. The applicant should also attach a certification document issued by the competent authority of the country of registration. If it is impossible to attach relevant certification documents due to special reasons, an agreement or other certification document recording the fact of the change may be attached, and the applicant should declare that the applicant bears all legal responsibilities for the authenticity of the certification document.

9. The company is a limited company. The invention patent applied for has been authorized and obtained a patent certificate. Now the chairman of the company wants to obtain the patent rights owned by the company. How should the procedures be handled? What documents need to be prepared?

• The patent owner or assignee should submit a patent transfer statement and a request for change of the bibliographic items, and attach supporting documents such as the transfer agreement, and pay an official change fee of NT$2,000.00 (approximately RMB 453.00) to complete the patent transfer procedures.
• In addition, if your company has only one director, all shareholders must agree to elect another shareholder with legal capacity to represent the company, and submit an agreement signed by representatives of all shareholders and a copy of the front and back of the company establishment (change) registration card;
• If your company has more than two directors, and one of them is the chairman, the other directors must represent the company and submit a copy of the front and back of the company establishment (change) registration card;
• If your company is a one-person limited liability company, you should handle it in the above manner after adding shareholders, or apply to the court for a temporary administrator to sign on behalf of the company and submit relevant supporting documents before proceeding.

10. When I searched for a certain design patent on the Internet, the TIPO official website showed that the patent protection period was only 13 years and 7 months. What's going on?

• The protection period of the design expires 15 years from the date of application, while the patent right of the design is granted from the date of announcement and the patent certificate is issued. Therefore, although the patent right of the design is 15 years from the date of application, it is obtained from the patent right. After obtaining the authorization announcement and receiving the patent certificate, it will expire from the date of authorization announcement until the expiration of 15 years.