FAQs on Patent Applications in Taiwan (VIII)

FAQs on Patent Applications in Taiwan (VIII)

1. What types of patents can be applied for new construction technologies?

• New construction technology methods are method patents. Only invention patents can include method inventions. Therefore, new construction technology can only be applied for invention patents.

2. When the patent application was filed, the original foreign language version had 6 claims, and when the Chinese version was added later, it was changed to 5. Can this be stated in the remarks? Or do I need to submit the Chinese version of the 6 claims and then change it to 5?

• If the applicant is unable to submit the Chinese translation of the specification, claims and drawings in the new application, he or she may submit the original foreign language text first and submit the Chinese translation later within the specified time limit. The date of submission of the foreign language text shall be regarded as the application date.
• In principle, the supplementary Chinese translation should be submitted as a complete translation based on the foreign original as the examination basis. If the submitted Chinese translation is inconsistent with the foreign original, the Patent Office will notify the applicant for confirmation. If the applicant submits a revised Chinese translation within the specified period, the originally submitted Chinese translation will be deemed not to have been submitted and will not affect the application date.
• If the applicant does not respond to the notification and does not submit a new Chinese translation, the Patent Office will still conduct the examination based on the originally submitted Chinese translation, which will not affect the application date.
• Whether the originally submitted Chinese translation exceeds the scope of the original foreign language application will be confirmed by the examiner during the substantive examination stage.

3. If the applicant is not a WTO member and does not receive national treatment, can he claim priority? Will the patent be accepted?

• Patent applicants must be WTO members, or their country has mutual priority with Taiwan, or have a base or place of business in the territory of WTO members or reciprocal countries, and apply as quasi-nationals to claim priority.
• Therefore, if the applicant does not meet the identity requirements for claiming priority in the new application, he or she cannot claim priority; however, the patent application will still be examined according to the procedures and will not be rejected due to the lack of WTO membership or quasi-nationality.

4. When submitting an invention patent, if Figure 3 is used as the abstract drawing, can I proactively amend it to change it to another drawing as the abstract drawing?

• Yes, a patent applicant can file a voluntary amendment, modify the abstract drawing, and a simple description of the relevant symbols, and attach the revised reference page and replacement page.

5. When an applicant uses a U.S. patent application as priority and submits a priority document to Taiwan, can he use the DAS code?

• Since the Taiwan Intellectual Property Office has not joined the DAS platform, it is not possible to obtain the priority document through the DAS code. Therefore, the patent applicant still needs to submit a request for a copy of the priority document to the USPTO to obtain the original copy of the priority document and then submit it to the Taiwan Intellectual Property Office.

6. Can the order of inventors be changed for a patent application that has already been submitted? If additional inventors are required, is the change fee only 300 yuan?

• To add an inventor, the applicant must submit a request for change of record and pay NT$300, and attach a statement of adding inventors signed by all inventors, and request to change the order of inventors.

7. If an applicant files an application for both an invention patent and a utility model patent, and before the invention patent is granted, the applicant has paid annual fees for the utility model patent application that has been granted for three years, if the applicant chooses the invention, can the annual fees for the utility model be refunded?

• For invention and utility model patent applications filed in the same case, if the applicant chooses invention after being notified of the choice before the invention is granted, and if the utility model has already paid annual fees for many years, the patent applicant may submit a statement of opinion to the Patent Office and attach the original receipt to request a refund. If the original receipt has been lost, the applicant must explain the reason to the Taiwan Intellectual Property Office.

8. If a utility model patent application is rejected, by what deadline can I file an invention application instead?

• If the original utility model patent application is still under examination, the request to apply for an invention patent application should be submitted no later than before the patent rejection decision is served.
• If the original application is for invention or design and is rejected, the request to change to invention should be submitted within 2 months after the delivery of the preliminary examination or reexamination decision.

9. My patent application in Taiwan claims U.S. priority, and I claim the same U.S. priority in Japan. Now my Japanese patent application has been granted. Can I file a PPH request in Taiwan?

• Yes, according to the requirements of the Patent Prosecution Highway in Taiwan and Japan, if the Taiwan patent application and the Japanese patent application claim the same priority, and the Japanese patent application is found to have allowable claims and can correspond to the Taiwan patent application after examination, then it meets the requirements of the PPH request.

10. If a patentability evaluation report is submitted to claim that a non-patent holder has engaged in commercial activities, is it sufficient to only attach evidence?

• After a utility model patent application is granted and announced, anyone may submit a utility model patentability evaluation report to the Taiwan Intellectual Property Office in accordance with the provisions of novelty, inventiveness, constructive novelty, or the principle of prior application.
• Required documents:
  • Request letter, 1 copy
  • Official Fees: If the number of claims is less than 10, the official fee for each report is NT$5,000.00; if the number of claims exceeds 10, an additional NT$600.00 will be charged for each claim starting from the 11th claim.
  • If there is a dispute between non-patent holders due to commercial implementation or patent infringement, relevant supporting documents must be attached