Taiwan Advance Patent & Trademark Office

What are the advantages of filing both an invention application and a utility model patent application in Taiwan?

The amendments to the Taiwanese Patent Act, made effective on June 11, 2013, introduce a seamless transition from the utility model (UM) patent to the invention patent.

Specifically, the applicants could file a UM patent application and an invention patent application, both of which pertain to the identical invention, on the same date. Since the UM patent application may be granted as a UM patent (without a substantive examination) within six months from the filing date, filing the UM patent application could help the applicants secure their rights in a relatively quick fashion despite trying to push the invention patent application through the extensive examination process, which generally takes at least 2.5 years from the filing date.

To deal with the double-patenting rejection in view of the UM patent after successfully overcoming all other merit-based (e.g., novelty/inventive step) and eligibility-based rejections over the invention patent application, the applicants could file a disclaimer. Such disclaimer functions to abandon the UM patent rights on the date the invention patent is issued. In doing so, the applicants can ensure their rights, arising out of the UM patent, will continue without interruption in the form of the invention patent.

Please be noted that a utility model is directed to the creation of technical ideas relating to the shape or structure of an article or combination of articles, utilizing the laws of nature. In other words, composition and process are not eligible subject matters for utility models.

Reference: Articles 32 and 104 of Patent Law

What if an invention was made in both USA and China? Note: Both the USA and China require a foreign filing license (FFL).

Real cases: An invention was made by two co-inventors. One lives in China and no record shows the Chinese co-inventor traveled to the USA. The other lives in the USA and no record shows the US co-inventor traveled to China. The foreign filing licenses are required in both China and the USA.

According to 37 CFR 5.11(b), the license from the Commissioner for Patents referred to 37 CFR 5.11(a) would also authorize the export of technical data abroad for purposes relating to the preparing, filing or possible filing and prosecution of a foreign patent application. Accordingly, preparation of a request in China for a China’s FFL prior to receipt of a US FFL might violate 37 CFR 5.11(b).

Article 20 of Chinese Patent Law prohibits applicants from filing foreign applications prior to receipt of a China’s FFL from China IPO (SIPO), but not from preparing patent applications or requests for a FFL from aboard.

Therefore, it would be better to prepare documents in the USA for the US FFL. Once the US FFL is received, the applicant can translate and file a patent application with the SIPO. Then, file a US patent application claiming the priority of the Chinese application.

Other than the above-mentioned procedure, taking the route of the PCT could be another option to think about. Specifically, you could secure the U.S. FFL (which could be done in a matter of days) and then file the English-version PCT application with the PCT Receiving Office in China, which effectively eliminates the need to secure the China’s FFL.

Thereafter, you could turn the PCT filing in China into the U.S. national phase application (or wait for the search report for the PCT filing and make the preliminary amendment if necessary). In doing so, you might be able to satisfy the requirements of the FFL without waiting too long before pursuing protection in both countries.

Do the amendments to the Patent Law, which became effective January 1, 2013, eliminate the requirement for assignments?

Prior to promulgation of the amendment to the current Taiwan Patent Act, it is required to submit an assignment at the time or within a specified period after the application is filed. According to Article 25 of the amendments, the requirement of the assignment is cancelled. Is this correct?

In fact, the deletion of paragraph 2 of Article 25 of the previous Taiwan Patent Law does not mean the abolishment of the practice of submitting inventors’ assignment documents. It is only a simplification of the procedure to submit assignment. The TIPO presumes that the applicant listed on an application has the right to file the application.

However, the TIPO might request the applicant to submit an assignment under certain situations. Specifically, if the invention was made by an employee in the performance of his/her duty and the applicant is the employer (Article 7), there is no need to submit an assignment. Second, if the invention was made by co-inventors and the applicants are identical to the co-inventors, there is no need to submit an assignment. In other situations where the applicants are not identical to the co-inventors, the TIPO might request for an assignment to show the applicants have the right to file the application. Third, if the applicant of the Taiwanese application claiming the benefit of priority is different from the applicant of the priority (parent) application, it is required to file evidence to show the applicant of the Taiwanese application has the right to file the Taiwanese application or to claim the benefit of the priority application. The evidence might be an assignment of invention or an assignment of foreign priority.

1.Grace Period for claiming priority – Article 29

(1)Old Law

Applicant must claim the benefit at the time of filing and

submit the priority documents within 4 months from the filing date.

(2)New Law

a)File within 12 months from the earliest priority date and

claim the benefit at the time of filing.

b)If unintentionally failing to claim the priority at the time of filing,

the applicant should apply for reinstatement of priority,

pay the required fee and undertake required actions within 12 months

from the earliest priority date.

c)Submit priority documents within 16 months from the earliest priority date.

2.Reinstatement for Failure to Pay Issue Fee – Article 52

(1)Old Law

3 months to pay Issue Fee, no grace period

(2)New Law

a)Unintentional failure

b)Pay the issue fee and two times the patent annuities of the first year

within six months after the time limit expired

(3 months from the date of Notice of Allowance)

3.Reinstatement for Failure to Pay Annuity – Articles 70, 94

(1)Old Law

a)Double annuity within 6 months after expiry

(2)New Law

a)Unintentional failure

b)Within 6 months, 20% more per month and up to double annuity

(100, 120, 140, 160, 180, 200, 200)

c)From 7 months to 18 months, Triple annuity (100,…300)

Examples:

Date of payment	2013/5/5	2013/6/5	2013/7/5	2013/8/5	2013/9/5	2013/10/5	2013/11/5	2013/11/6~ 2014/11/5
Payment attend after due date	Payment attend on time	1^st month of grace period	2^nd month of grace period	3^rd month of grace period	4^th month of grace period	5^th month of grace period	6^th month of grace period	7^th ~ 18^th month from original due date
Payment (fine included)	NT$5,000	NT$6,000	NT$7,000	NT$8,000	NT$9,000	NT$10,000	NT$10,000	NT$15,000
Ratio of fine	0	20%	40%	60%	80%	100%	100%	300%
Ratio of fine	0	+1,000	+2,000	+3,000	+4,000	+5,000	+5,000	+10,000

If 18 months from expiry lapses, no reinstatement is possible.

Changes for Design Patents

1.Subject Matters for Design Patents Increase

(1)Old Law

Entire design only

(2)New Law

a)Partial designs

b)Computer-generated icons and graphical user interfaces (icons & GUIs)

c)A set of design where two or more articles belong to the same category and

such articles are in custom sold or used as a set

d)Associate design was abolished.

e)Derivative design system was adopted.

What are Derivative Design Patents?

Derivative design is a design similar to the original design according to Article 127. A derivative design patent shall expire simultaneously with the original design patent according to Article 135. However, the English translation to Article 135 is not the exact meaning as Chinese language, “A derivative design patent shall expire simultaneously with the original design patent.” Article 135 should mean that the patent term of the derivative design patent should not extend beyond 12 years from the filing date of the original design patent. The remarks for the amendments explicitly express that the derivative patent has its only patent right and the patentee shall pay the annuities for original and derivative design patents, respectively. If the original design patent lapses the deadline to pay the annuity but the patentee paid the annuity for the derivative design patent, the expiry of the original design patent does not affect the derivative design patent.

Second, the calculation of renewal for the derivative design patent should be independently calculated from the issue date of the derivative design patent.

Does a lapse of the original design patent not affect the rights on the derivative design patent?

The original (parent) design patent might be extinguished under different situations, for example, lapse of deadline for paying annuity or lapse of 12 years from the filing date of the parent patent (patent term). If a parent design patent lapses the time limit for paying annuity, lapse of the parent design patent does not affect the rights on its derivative design patent. If a parent design patent lapses 12 years from the filing date of the parent patent, its derivative design patent also lapses its patent term because the patent term of the derivative design patent shall not extend beyond that of the parent design patent.

How to calculate annuities and patent terms of a derivative design patent?

Renewals for derivative designs are due on the anniversary date of its issue date. The grace periods for paying the issue fee and annuities are the same as that for invention; if the annuity is not paid before the due date, it still can be paid later with a fine.

The following is an example for dead lines of parent and derivative design patent.

Filing date of parent design: May 25, 2013

Filing date of derivative design: July 16, 2013

Derivative design grant date: December 30, 2014

Parent design grant date: October 5, 2014

(1) Renewal due for the second year of the derivative design: December 29, 2015

[Note] The 1st annuity needs to be paid together with the issue fee within 3 months after the receipt of the Notice of Allowance.

(2) 1st grace due of derivative design: June 29, 2016 (More than 6 months from the due date)

(3) 2nd grace due of derivative design: June 29, 2017 (More than 12 months from the 1st grace due date)

(4) Expiry of the derivative design: May 25, 2025 (After 12 years from the parent design filing date)

(Please see the time table below for easy review)

Graphic User Interface, Partial Designs, and Icons?

The definitions of Partial, GUI’s and Icon designs are very close to that defined by the US Patent Law and Rules. Partial, GUI’s and Icon designs are deemed as normal designs. That means the partial, GUI’s and Icon designs have their own patent numbers and expiration dates. They do not depend upon any parent design. The calculation of partial, GUI’s and Icon designs is the same as normal designs.

What is a set of articles according to Taiwan Patent Law?

According to Articles 129 of Patent Law, one design application for a set of articles can be filed to cover "the design." The scope of the design patent pertaining to the set of articles covers the ornamental design of the set of the articles, but does not individually cover the ornamental design for each of the articles. If the applicant would like to have a patent right covering the design of the whole set of the articles as well as individual design of the articles, it is necessary to file an application for the set of the articles as well as applications for each design of the articles, respectively. The design patent for a set of articles has its own patent number. The design patents for each of the articles in a set of articles have their own patent numbers as well and their annuities should be paid individually. If an applicant files an application for a set of articles, Taiwan IPO will only grant one design patent covering the ornamental design of the set of articles, not multiple design patents covering each ornamental design of the article in the set of the articles.

What are the differences between divisional design and derivative designs?

The divisional design application is a design application divided from a parent design application which comprises at least two designs. If an applicant filed a design application including two designs, the TIPO will issue an Office Action rejecting the application under Article 129. Upon receipt of the Office Action, the Applicant may file a divisional design application according to Article 130.

The divisional designs expire on the same date their original designs expire. The renewal of the divisional designs starts from the issue date of the divisional designs while the renewal of the original designs starts from the issue date of the original designs.

The derivative design is a design similar to another design which was filed previously or simultaneously. Please refer to Article 127.

Accordingly, a divisional design application includes a design which is not similar to the design in its parent design application. A derivative design application includes a design which is similar to the design in its parent design application. If one applicant filed two applications which involve two designs similar to each other, the TIPO will request the applicant to convert one of the applications into a derivative design application according to Article 131.

Deadline to claim priority and file a priority document for a design patent application and a derivative design application

The priority should be claimed within 6 months from the earliest priority date and the priority documents should be submitted within 10 months from the earliest priority date according to Article 29 applicable mutatis mutandis under Article 142. However, in accordance with paragraph IV of Article 29 applicable mutatis mutandis under 142, the applicant may, within 10 months from the earliest priority date, apply for a reinstatement of priority claim.

Second, a derivative design should be filed before issue of its parent design and a statement indicating the basic information of the parent design should be submitted at the time the derivative design is filed. If the parent design claims the priority to a foreign design, the claim of the priority should also be indicated at the time the derivative design is filed.

6 months and 10 months mentioned above would be applicable to derivative design. The matter we should pay attention to is the derivative design should meet the definition of a "Derivative design" of Article 127, "derivative design should be similar to its parent design."

Deadline to pay the grant fee for a derivative design application

The deadline to pay the grant fee for a derivative design is 3 months from the receipt of the notice of allowance of the derivative design. This is the same as normal design applications. However, the annuities of derivative designs should be paid independently. For example, if the parent design was granted on March 1, 2012 and the derivative design was granted on October 1, 2013, the deadlines for paying annuities for the parent design and the derivative design are March 1st and October 1st, respectively. The expiration date of the parent design and the derivative design should be 12 years from the filing date of the parent design if all annuities are paid. In addition, the derivative design patent is still enforceable if the parent design had expired due to not paying annuity but the annuity for the derivative design was paid.

What may the applicant do if the applicant would like to protect new embodiment which was invented after filing of an earlier filed patent application?

It is not allowed to add new matter after filing of an application. According to US patent system, the applicant may consider filing a CIP (continuation-in-part) application claiming the benefit of the earlier patent application (35 U.S.C. 120). According to Taiwan Patent Law, there is no application the same as US CIP applications. However, an applicant may file a subsequent patent application claiming the domestic priority of his/ her earlier patent application within 12 months from the filing date of the earlier patent application in accordance with Article 30 of Patent Law as attached below. Practically, we usually file the subsequent application with new matter (new embodiments).

Next, it should be noted that the earlier application shall be deemed having been withdrawn upon expiry of 15 months from the filing date of the earlier application. Therefore, it is important that the subsequent application should claim inventions in both the earlier application and the subsequent application (new matter). Otherwise, the claimed invention of the earlier application will be deemed having been withdrawn if the subsequent application claims only new matter.

Article 30 Priority claim based on earlier application

Where an applicant, based on his/her earlier invention or utility model patent application in the ROC, files a subsequent patent application, he/she may make a priority claim with respect to the invention or utility model disclosed in the description, claim(s) or drawing(s) submitted for the earlier patent application. This provision shall not apply under any of the following circumstances:

1. where a period of twelve months has elapsed from the filing date of the earlier patent application;

2. where priority has been claimed in accordance with the provisions of Article 28 or this Article in respect of the invention or utility model disclosed in the earlier patent application;

3. where the earlier patent application is a divisional patent application to Paragraph 1 of Article 34 or Paragraph 1 of Article 107, or a patent application converted pursuant to Paragraph 1 of Article 108;

4. where the earlier patent application is for an invention patent application that has been published or has been irrevocably rejected;

5. where the earlier patent application is for a utility model patent application that has been published or has been irrevocably rejected;

6. where the earlier patent application has been withdrawn or dismissed.

The earlier patent application referred to in the preceding paragraph shall be deemed having been withdrawn upon an expiry of fifteen months from its filing date.

Priority claimed shall not be withdrawn upon an expiry of fifteen months from the filing date of the earlier patent application.

For a subsequent patent application filed with priority claim in accordance with Paragraph 1 of this Article, which has been withdrawn within fifteen months from the filing date of the earlier application, the priority claim thus made shall be deemed having been withdrawn at the same time.

Where an applicant claims two or more priorities for a patent application, the calculation of priority period shall be on the basis of the earliest priority date.

For a patent application filed with priority, examination on its patentability shall be based on the priority date.

Where a priority claim is made in accordance with Paragraph 1 under this Article, the filing date and the application number of the earlier patent application shall be declared at the time of filing. If the above-mentioned declaration is not made, priority claim shall be deemed not having been made.