Global Patent Applications

A patent applicant refers to a person who files a patent application with the Office in their name, and they must be an entity that can exercise their rights and obligations independently in accordance with the law. In addition to natural persons and legal persons, public schools, governmental agencies, public buildings and other public law organizations with independent budgets are recognized as applicants in practice. If there is any doubt about the applicant’s eligibility, the applicant may be notified to attach the rules of the organization for examination.

• If a patent application is filed in the name of a branch office, because the branch office is a branch organization under the jurisdiction of the head office, the legal personality of the branch office and the head office is single and indivisible, and the branch office cannot be the subject of the rights and obligations, so it is not an eligible applicant, and the Office will notify the head office as the applicant.
• If a branch office of a foreign company in Taiwan, which has been authorized to operate in Taiwan, files a patent application, it should still file the application in the name of the head office of the foreign company, but the person in charge of the branch office of the foreign company in Taiwan can file the application on behalf of the person in charge of the branch office of the foreign company in Taiwan.
• A branch of a foreign company established in a country other than the country in which the head office is located (referred to as a foreign branch) may be an applicant for a patent if, under the domestic law of the country in which the foreign branch is established, the foreign branch has an independent legal personality.
• Therefore, if a foreign branch is the applicant of a patent, the Taiwan Intellectual Property Office will notify the applicant to make corrections within a certain period of time, and the applicant may change the name of the foreign branch to the name of the applicant, or attach the documents proving that the foreign branch has an independent legal personality in the place where the patent is established; and if the corrections have not been made within the period of time or if the corrected documents are still not able to be proved, the applicant shall still be the applicant in the name of the foreign headquarter.

A patent applicant should be a natural or legal person. A sole proprietor or a “firm” that is not a subject of rights and obligations is not allowed to be a patent applicant. However, the applicant may file a patent application on behalf of the applicant or all partners.

If the patent application right is common, the application should be filed by all co-owners. Except for withdrawing or abandoning the application, dividing the application, reapplying for a change of application, or as otherwise provided in the Patent Law, which should be jointly cosigned, the other procedures can be carried out by each person individually. However, if a representative is appointed, the agreement shall apply. If no representative is appointed, one person shall be designated as the person to be served. If no person is designated as the person to be served, the applicant will be notified of the deadline to designate the person to be served, and if no person is designated by the deadline, the first-order applicant shall be the person to be served, and the other person shall be notified of the service by a copy of the notice, and service shall be effected upon the first-order applicant.

The filing date refers to the date on which the applicant submits the patent application to the Office with all the relevant documents. The patent filing date is relevant to the examination of the patent elements.

If part of the invention (utility design) specification or drawing is missing in the application, the Office will notify the applicant to make corrections, and will handle the application according to the applicant’s subsequent behavior as follows:

• If the applicant has made corrections, the date of making corrections shall be the date of application.
• If the applicant does not correct the defects which do not affect the disclosure of the actual technical content, the date of application shall be the date of application.
• If the applicant makes corrections and at the same time claims that the corrected portion has been shown in the prior application claiming priority and is approved by the Office, the date of application shall be the date of the original application.
• If the applicant has withdrawn all corrections within 30 days after the submission of the application form confirming the date of application, the date of application shall be the date of the original application.
• The application will not be processed if the corrections are not made and not replied to after the specified period of time.

The corrected Chinese version shall be translated correctly and completely according to the foreign language version at the time of application, and shall be used as the base text for examination by the Office. If the corrected Chinese version exceeds the scope of the foreign language version at the time of application, it will not be patentable.

If an application is filed in a language other than Chinese, the explanatory statement and drawings should fully disclose the technical or technological content of the patent to be applied for. If any discontinuity in the page numbering of the foreign language specification or the symbols of the drawings is found during the examination of the application, the applicant will be notified to make corrections within a certain period of time, and the legal effect will be in accordance with the principle of the omission of the Chinese language specification or the drawings. The same applies to the applicant’s own discovery of partial omissions in the explanatory statement or omissions in the drawings.

No. The change of one document with multiple case numbers only deals with the change of data, and the annotations on the patent certificates should be photocopied and returned to the patentee case by case. Therefore, when returning the patent certificates to apply for the annotations, please do so by using one document per case.

The inventors shall be those listed in the inventor column of the application form at the time of filing. After filing the patent application, if the applicant applies for the addition of an inventor, the application should be attached with the application form and the documents signed by all the inventors after the addition of the additional inventor; if the applicant applies for the deletion of an inventor, the application should be attached with the application form and the documents signed by the inventor deleted stating that he/she is not the inventor of this case.

 If the applicant applies for correction of the inventor due to a mistake, the application should be attached with the application form stating the reasons for the mistake (e.g., the agent inadvertently and wrongly keyed in information about the inventor of other cases), and the relevant supporting documents (e.g., the original entrusted information of the applicant) should be submitted. In the case of correcting an application due to a mistake, the application should be accompanied by a letter describing the reason for the mistake (e.g., the agent inadvertently typed in the information of the inventor of another case), and relevant supporting documents (e.g., information on the applicant’s original assignment, documents proving the right to apply, and the contract of employment).

No, when the transferor or transferee of the transfer and registration of the patent application right is a domestic company, and the representatives of both companies are the same person, one of the parties should appoint another person to represent the company.

The deed of transfer must be signed by both the transferor and the transferee. However, if the transferor has unilaterally signed the deed and the transferee applies for the registration of the transfer to indicate the agreement of both parties, the transferee does not need to sign the deed of transfer.

A photocopy of the deed may be made in lieu of the deed, provided that it is a true copy of the original or original.

• How to claim: To claim an international priority, you must state the date of the first foreign application, the country (WTO member) where the application was filed, and the case number at the time of filing. In case of claiming compound priority, all priority cases should be declared. If the date of filing and the country or WTO member accepting the application are the same for the claim of plural priority, it is still necessary to state the information of the base case of the claim one by one; otherwise, the number of claims will be recognized according to the number of items stated in the application.

• Time Limit: If an applicant has filed the first patent application for the same invention with a WTO member or a country that recognizes priority with Taiwan (WTO member), and files a patent application with Taiwan within 12 months (6 months for design) from the date of the first foreign patent application (calculated up to the date of the application filed with Taiwan), the applicant may claim international priority, and should pay attention to filing the original document proving the acceptance of the application by the foreign country or WTO member within 16 months (10 months for design) from the earliest date of the priority date. It should be noted that within 16 months of the earliest priority date (designed to be within 10 months), the original document certifying that the application has been accepted by the foreign country or WTO member government should be submitted.

If the applicant is not the same as the applicant who claimed the right of first refusal, it is presumed that they have the legal status of claiming the right of first refusal, and the Bureau does not require the submission of additional documents to prove the right of first refusal. In the event of any dispute in the subsequent period, the applicant shall be responsible for their own legal liabilities.

If the applicant fails to declare the claim for international priority when applying per the regulations or the declaration is incomplete (the date of the first application and the country of application or WTO member are both incorrect or missing), and subsequently wants to make a supplementary declaration or add a priority claim, they may apply to reply to the priority claim within 16 months after the earliest priority date (for design patent applications, 10 months after the earliest priority date), and handle the following matters at the same time:

• Pay the application fee of 2,000 NTD for the priority claim.

• The filing date of the basic case for claiming priority, the country or WTO member that accepted the application, and the application number.

• Submit the original copy of the priority certification document. In particular, it should be noted that the re-opening action (including payment of the application fee) must be completed within 16 months after the earliest priority date (10 months after the earliest priority date for design patent applications). Reinstatement of rights will not be accepted after the deadline. Apply.

• However, if the application fee has been paid but the amount is insufficient, you will be notified to make corrections within a time limit. If the application fee is not corrected within the time limit, the application will not be accepted.

Yes. If an invention contained in the scope of a patent application filed in Taiwan is disclosed in a provisional application, the provisional application may be used as the basis for claiming priority in Taiwan.

For patent applications claiming priority (including applications claiming PCT, EPC, OHIM), the priority base case must be the “first” patent application filed in the territory of a WTO member or a reciprocal country.

For applicants who request substantive examination, this Bureau will conduct a patentability review. If the application meets the requirements, an approval decision will be issued. After the applicant pays the first-year annuity and certificate fee, patent rights will be granted from the date of publication. If the application does not meet the requirements, a notification of examination opinion will be issued, setting a deadline for response or amendment. If the applicant fails to respond or amend within the deadline, or if the response or amendment does not overcome the grounds for rejection, a rejection decision will be issued, and the patent will not be granted.

For applicants who do not request substantive examination, the Bureau will not conduct a patentability review. If no request for substantive examination is submitted within three years from the application date, the application will be considered withdrawn.

After each aspect of the application is examined, if grounds for rejection are identified, this Office will issue an examination opinion notice with reasons, allowing the applicant to respond and address these grounds for rejection. During the response, the applicant may also make amendments. If the applicant overcomes all notified grounds for rejection through response or amendment, but new grounds for rejection arise due to the applicant’s amendments, a final notice may be issued. This final notice will restrict the amendments to the patent scope to ensure a prompt conclusion of the examination and enhance the clarity, reasonableness, and predictability of the examination opinion notice.

A person who manufactures an item before the patent applicant obtains patent rights does not bear liability for infringement. However, if the item is the subject of an invention patent application and the conditions under Article 41 of the Patent Act apply (i.e., the invention has been disclosed and the inventor has issued a written notice, and the person continues commercial use after receiving notice, or knowingly continues commercial use after the application has been made public but before patent issuance), the patent holder may request reasonable compensation after the patent is granted.

A claim arising from patent infringement will be extinguished if not exercised within two years from the time the claimant became aware of the infringement and the liable party. Additionally, if ten years have passed since the infringing act, the claim will also be extinguished.

In the event of patent infringement, the patent holder may seek damages and may calculate the damages based on one of the following three options:

1. According to Article 216 of the Civil Code, if the patent holder cannot provide evidence to prove their damages, they may determine the damages based on the benefits that could normally be obtained from the implementation of the patent, minus the benefits obtained from implementing the same patent after the infringement, with the difference being the amount of damages suffered.
2. Based on the profits gained by the infringer from the infringing act.
3. Based on a reasonable royalty that would have been charged for the authorized implementation of the patented invention.

If the infringement was intentional, the court may, at the request of the victim, award damages above the proven amount, considering the circumstances of the infringement. However, this amount shall not exceed three times the proven damages.