Q&A on Patent Application in Taiwan

Can patents cover any type of invention, including software, business methods, and medical procedures?

• Yes, it is possible to obtain a patent covering software or business methods (under modern computer software architecture, but not exclusively business methods). In contrast, the following subject matter is not patentable:
  • Animals, plants and biological processes for the production of animals or plants (except processes for the production of micro-organisms);
  • Methods of diagnosis, treatment or surgery for humans or animals; and
  • Any invention contrary to public policy, morality or public health.

Who owns patents for inventions by company employees, independent contractors, multiple inventors, or joint ventures? How is patent ownership formally recorded and transferred?

• Unless otherwise agreed in the contract, the company has the right to apply for patents and patents for inventions of its employees' work for hire, and the employees have the right to demand appropriate compensation and to have their names marked as inventors. The right to apply for patents for inventions of employees and the patent rights outside of the work for hire belong to the employees, but for inventions completed using the resources or experience of the employer, the employer can implement the same invention, utility model or design within the enterprise after paying the employee reasonable remuneration.
• The patent application right and invention patent right of the independent inventor shall be granted in accordance with the agreement. In the absence of an agreement, the patent application right and invention patent right shall belong to the independent contractor, but the sponsor shall be responsible for implementing the invention.
• Multiple inventors jointly own the right to apply for a patent and must jointly file a patent application.
• The Patent Law does not have any special provisions on the ownership of invention patents of joint ventures. The patent ownership of such inventions is generally determined through contracts.
• The ownership and transfer of patents are published in the Patent Gazette and recorded in the database of the Taiwan Intellectual Property Office. No assignment, trust, license or pledge of a patent may be asserted against a third party unless it is registered with the Intellectual Property Office.

How long does it usually take to obtain a patent and how much does it usually cost?

• There are three types of patents in Taiwan: invention, utility model and design.
  • Invention: The average granting time for an invention patent is approximately 18 to 24 months.
    • Generally speaking, from filing an application to receiving a patent certificate, without encountering additional patent office litigation, official fees will start at a basic fee of NT$15,000 (including application and examination fees). Attorney fees for handling prosecutions vary.
    • The examination fee is calculated based on the number of claims. The basic fee is NT$7,000.00 (including 10 claims). From the 11th claim, the additional fee for each claim is NT$800.00. In addition, if the total number of pages of the specification, claims and drawings in the patent application exceeds 50 pages, the additional fee for the specification will be charged from the 51st page, and each page will be NT$500.00.
    • The annual fee for invention patents in the first three years is NT$2,500. This amount increases year by year.
  • Utility Model: The Taiwan Intellectual Property Office only conducts a formal examination of utility model applications, not a substantive examination. Therefore, the average authorization time for utility model patents is about 4-6 months.
    • Since the examination time for utility model applications is usually shorter than that for invention patents, some applicants adopt the strategy of filing invention and utility model patent applications for the same creation on the same day. Through this strategy, applicants can enjoy the continuous protection of invention patent rights and utility model patent rights, but ultimately only obtain invention patents or utility model patents.
    • The utility model application fee is NT$3,000.00.
  • Design: The average time for a design patent application to be granted is 12-15 months.
    • The official fee for applying for a design patent is NT$3,000.

Is there any expedited procedure for patent application?

• Yes, there are two procedures to expedite patent applications.
• An applicant may file a request for ordinary accelerated examination in the following circumstances:
  • The foreign patent family of the application has been substantively examined by the foreign patent authority;
  • The European Patent Office (EPO), the Japan Patent Office (JPO), or the United States Patent and Trademark Office (USPTO) has issued an office action during the substantive examination, but there is no foreign patent for the application.
  • The application for the invention is necessary for commercial exploitation; or
  • The present invention relates to green technology.
• Patent Prosecution Highway (PPH) request. This program enables an applicant whose claims are determined to be allowable and patentable at the Office of First Filing (OFF) to file a corresponding application at the Office of Second Filing (OSF) and have it examined in sequence, while allowing the OSF to utilize the search and examination results of the OFF.
• In addition, there is an enhanced version of the PPH procedure, PPH MOTTAINAI. PPH MOTTAINAI enables an application whose claims have been determined to be allowed or patentable by a prior examining office to undergo accelerated examination at a subsequent examining office, regardless of which examining office the application was originally filed with, upon request by the applicant through a simplified procedure.
• Currently, USPTO and TIPO have signed a PPH bilateral agreement, and the Japan Intellectual Property Office, the Spanish Patent and Trademark Office, the Korean Intellectual Property Office, the Polish Patent Office and the Canadian Intellectual Property Office have signed a PPH MOTTAINAI bilateral agreement with TIPO.

What must be disclosed or described in a patent application about the invention? Are there any specific guidelines to follow or pitfalls to avoid when deciding what to include in an application?

• According to the Patent Law, the applicant shall submit to TIPO the application, specification, claims, abstract and drawings of the specification. According to Article 26 of the Patent Law, the specification shall disclose the invention in a manner that is clear and sufficient for a person of ordinary skill in the art to understand and implement. The claims shall define the claimed invention, and each claim shall be clearly and concisely disclosed and accompanied by the specification. The abstract shall contain a summary of the disclosed invention.
• The disclosure method of the description, claims, abstract and drawings shall be prescribed by the Implementing Rules of the Patent Law.
• TIPO also published the Patent Examination Guidelines, based on which the IP office examines the received applications and decides whether to grant patent applications. The proposed guidelines were drafted based on the practices of USPTO, JPO and EPO, so their contents are very similar to international patent examination practices.
• In short, the requirements of practicality, novelty and inventive step play an important role when the IP office examines the application.
• The Patent Law stipulates that the claims must be supported by the description and drawings. If the claims contain features that are not disclosed in the description or drawings, they will not be granted.

Must inventors disclose prior art to patent examiners?

• The Implementing Regulations of the Patent Law require applicants to disclose prior art known to them; however, under TIPO regulations, non-disclosure does not necessarily affect the validity of a patent as long as it does not prevent a person skilled in the art from understanding the content of the invention and how to practice the invention.

Can a patent applicant file one or more subsequent applications to pursue additional claims to inventions disclosed in its previously filed applications? If so, what are the applicable requirements or limitations?

• A patent applicant may supplement or amend the claims of a prior application, but the content of the supplement or amendment shall not exceed the scope of the specification or drawings disclosed in the original patent application, except for correcting translation errors.
• If the supplement or amendment exceeds the scope of the description or drawings, the patent applicant must claim priority for the invention described in the description or drawings submitted with the prior patent application based on the prior application filed in Taiwan, except for the following circumstances:
  • 12 months have passed since the date of filing of the earlier patent application;
  • Claiming priority in a foreign application for an invention or utility model described in an earlier patent application;
  • The prior patent application is divided into several applications or converted;
  • An examination decision has been made on the earlier patent application; or
  • The prior application is withdrawn or rejected.

Is it possible to appeal an adverse TIPO decision to the courts?

• The applicant for a patent or design patent may apply for a review of the rejection decision within two months from the date of the service of the rejection decision by the Intellectual Property Office. Unless the application is rejected for procedural reasons or the applicant is not eligible, the review procedure will constitute a prerequisite for subsequent appeals to the Ministry of Economy, a panel of three judges of the Intellectual Property Commercial Court (IPCC) and the Supreme Administrative Court.
• Since 2004, these review procedures no longer apply to utility patents, as utility patents are now subject to formal examination by the IP Office, rather than substantive examination; therefore, utility patent applicants can appeal against adverse decisions directly to the Ministry of Commerce within one month from the date of delivery of the IP Office's decision. Further appeals can be made to a three-judge panel of the IPCC and finally to the Supreme Administrative Court.

Does TIPO provide a mechanism to oppose the grant of a patent?

• No, the Patent Act has abolished the opposition procedure that previously allowed third parties to oppose grant within three months of the publication of the application. Now, the only mechanism to oppose a patent is to file an invalidity action after the patent has been granted.

Does TIPO provide any mechanism to resolve priority disputes between different applicants for the same invention? What factors determine who has priority?

• Taiwan adopts a first-to-file system under the Patent Act, so if multiple applications are filed for the same invention, TIPO will only grant the patent to the first applicant to file an application.

Does the Patent Office provide for procedures for amending, reviewing, or revoking a patent? Can a court amend patent claims during litigation?

• The Patent Law only allows patent holders to apply for amendments to the contents of the specification and drawings, including deleting claims, narrowing the scope of claims, correcting errors or translation errors, or ambiguous descriptions. Amendments shall not exceed the scope of the contents disclosed in the original specification or drawings when the patent application was filed, and shall not substantially expand or change the scope of the patent claims.
• Once the amendment is authorized, TIPO will publish the reasons for the amendment in the Patent Official Gazette. The effect of the amendment to the specification or drawings is retroactive from the date of publication to the date of the patent application. A patent can be invalidated (revoked) by an invalidation lawsuit filed by any party in the IP Office or by an invalidation lawsuit filed by the IP Office ex officio.
• There is no reexamination procedure in the sense that anyone can challenge the patentability of a patent at any time based on prior art. Instead, the reexamination provided for in the Patent Law is a prerequisite for applicants for invention patents or design patents to enter administrative relief procedures.
• During the litigation process, the court may not amend the claims on its own initiative.

How is the patent protection period determined?

• The term of an invention patent is 20 years, calculated from the date of patent application. In the case of invention patents involving drugs, pesticides or their preparation methods, which must be approved by the government in advance before implementation in accordance with other laws and regulations, the patentee may apply for an extension of the patent term, which shall not exceed five years.
• The term of a utility model patent is 10 years from the filing date.
• The term of a design patent is 15 years from the date of application.