FAQs on Patent Applications in Taiwan (VII)

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

1. If the invention patent application is marked with "one case, two applications", but the utility model application is not marked, in this case, are there any remedial measures?

• According to the relevant provisions of Article 32 of the Patent Law of Taiwan, the same person who files for the same invention patent and utility model patent application on the same day shall make separate declarations at the time of application. In practical operation, if the "one case, two applications" are not declared separately in the application form of the invention and utility model patent applications, including one case without a declaration, the "one case, two applications" declaration shall not be made later after the application is filed.

2. Can a non-Taiwanese company apply for a patent certificate with the help of its Taiwan subsidiary?

• The parent company and its subsidiary established through investment are different legal entities, so the subsidiary cannot apply for a patent certificate in its own name on behalf of the parent company. If the parent company has a branch in Taiwan but does not have a business location, the branch can apply for a patent certificate and pay the annual fee in the name of the head office.

3. When handling the change of patent rights, what kind of seal should be used for the smaller seal of the legal person's seal?

• The big seal required in the change request form is the legal person seal, and the small seal is the representative seal. The representative seal can be stamped or signed.

4. For an application after the patent type is changed, do the applicant, inventor, and agent need to be the same as those in the original application before the change?

• An amendment application is a patent application for a different type of invention from the original application. For example, an invention patent application can be changed to a utility model after request. Therefore, the applicant and creator should not be different due to the different patent types, and the relevant application information should also be the same. The relevant principles are as follows:
  1. The applicant of the amended application should be exactly the same as the applicant of the original application. If they are not the same, the application right of the original application can be transferred so that the applicant of the amended application is the same as that of the original application.
  2. The inventors must be exactly the same. If they are different, the inventor should be changed.
  3. The applicant needs to entrust another agent to handle the matter and change the agent at the same time.

5. How to check the patent rights of the patent owner that are still in existence or have expired?

• You can use the TIPO patent search system to search. The search keywords can be: patent owner name, company name or legal person name. Link: Patent Information Search System of the Republic of China (tipo.gov.tw)

6. Can I apply for changes while applying for a patent certificate? Do I need to pay official fees for changes?

• You can check the "handle changes at the same time" option when submitting the application for patent certificate. Whether you need to pay the corresponding change fee depends on the specific circumstances of the matter to be handled. The link to check the corresponding fee is: Intellectual Property Office Patent Theme Website - Patent Application - Patent Fees - Patent Fees List (tipo.gov.tw)

7. What should be done if the name of one of the co-applicants is incorrect and it is impossible to obtain the certification documents signed by the other co-applicants?

• If it can be proved that the incorrectly written applicant is the same entity as the correct applicant, and it is just a textual or typing error, then the relevant error declaration documents can be submitted by the agent to apply for the change of the applicant's name or title due to the incorrect writing (the official change fee is NT$300). The relevant error declaration can be accompanied by the applicant's power of attorney, identity certificate, letter of authorization, etc., which are sufficient to prove that the surname, first name or title is written incorrectly.
• If they are not the same entity, that is, the applicant is mistakenly written as another natural person or legal person, the application right certification document should be attached to correct the applicant, and the date of correction of the applicant should be used as the application date (no official fee is required), or the transfer certification document issued by the original applicant should be attached and the official fee should be paid to go through the application right transfer procedure.

8. Can the change of agent and the request for correction and extension be processed together?

• You can check the box "Change matters at the same time" on the request form when specifying the period in the request for extension, and indicate the name of the changed agent, attach a power of attorney and pay the change fee (NT$300).

9. If more than one application requires a change of address, can I change it myself? Do I need to pay a fee for changing the address? Does the seal used on the change request have to be the seal registered with the Department of Commerce of the Ministry of Economic Affairs?

1. If the change results of the same applicant are the same, such as the same applicant/patent holder has the same address after the change, this situation belongs to the case of multiple case numbers in one document, and can be handled by using the TIPO patent application/patent right (multiple case numbers in one document) change request form; if it does not belong to the case of multiple cases in one document, the TIPO "patent change application request form" can be used to handle the change procedures for one document and one case. The above two situations can be handled by the applicant himself without entrusting an agent.
2. If only the applicant's address is changed, the applicant can complete the online change procedure by himself through the TIPO electronic application system if he has a TIPO e-Network account. Link: Intellectual Property Bureau (tipo.gov.tw) .
3. No official fee is required for address change. For other changes, please refer to: Patent Application - Patent Fees - Patent Fees List (tipo.gov.tw)

10. If a foreign company transfers its patent rights to a natural person in Taiwan, and the natural person is also the representative of the foreign company, is there an issue of mutual representation?

• According to the relevant provisions of the TIPO Patent Law, if the transferor and the transferee in the patent transfer procedure are Taiwanese companies, the agents of both companies are the same person, or when the transfer procedure is handled between a Taiwanese company and its company representative, a transfer certificate should be signed and the corresponding supporting documents should be attached (if the representative transfers the company free of charge, this restriction does not apply).
• A foreign company transfers its patent rights to its representative. Although the representative is a natural person in Taiwan, both parties are not local companies in Taiwan. In this case, there is no problem for the representatives of both parties. The original patent owner or the transferee only needs to issue a patent transfer certificate and pay the official fee for the change (NT$2,000).