Yes. Apart from the non-statutory subject matter prescribed under Articles 22 and 23 of the Patent
Act, the ROC does not impose limitations on filing computer software related invention patent
applications. An invention patent can be filed if the application is a creation of technical concepts
by utilizing the rules of nature, in compliance with Article 22 of the Patent Act (having industrial
applicability, novelty, and progressive characteristics), and does not violate provisions prescribed
under Article 24 of the Patent Act. The approval or rejection of the application should depend
on an examination based on the technical disclosure of the specification.
Are concepts subject to patent protection?
Concepts are not subject to patent protection. A patent has to disclose concrete and applicable
techniques that can be applied by anyone in the relevant field.
Can foreign patents and techniques used to manufacture locally in the ROC file for patent
applications?
For patents and techniques that have already been disclosed in a foreign country, unless priority
right has been claimed, the patent application shall be rejected in the ROC since it has lost novelty.
Moreover, the patent system was enacted to protect and encourage inventions. If one intends to
obtain a patent using illegal means, or if one does not research and invent by oneself, but plagiarize
and copy another's techniques and products, such a patent does not comply with the Patent Act.
What documents should be submitted when filing an invention patent application?
The application for an invention patent shall be made by the person entitled to file the patent
application by submitting to TIPO an application, a specification, and necessary drawings. Rules
governing how the application, the specification and necessary drawings should be drafted are
stated in detail in the Implementing Regulations of the Patent Act.
What is a filing date?
According to Paragraph 3, Article 25 of the Patent Act (which shall apply mutatis mutandis to utility
model patents under Article 108 of the same Act) and Paragraph 3 of Article 116, the filing date shall
be the day on which the application, the specification and necessary drawings are all submitted to
TIPO by the applicant. Thus, an effective filing date is established with TIPO on the day on which all
the aforesaid documents are submitted. If any of the required documents are missing, the filing date
will be postponed.
After a patent application is filed, when can an application number be obtained?
If the applicant submits the application with TIPO or the collection counters in Hsinchu,
Taichung, Kaohsiung service centers in person, the application number should be
obtained at the time of submission. If the application is submitted by registered mail, the
delivery time will be 2-3 working days, and TIPO will issue an application number upon
receipt of the application. For the convenience of checking the patent application
examination status, the service counters at TIPO and the Hsinchu, Taichung, Kaohsiung
service centers provide telephone inquiry services.
Is an assignment required when filing a patent application?
When filing a patent application, if the applicant is also the inventor/creator, an assignment
is not required; if the applicant is not the inventor/creator, an assignment signed by the
inventor/creator is required. According to Paragraph 3, Article 25 of the Patent Act, an
assignment is not one of the requirements for obtaining a filing date.
What should be done if an assignment signed by the inventor cannot be obtained for the patent
application?
In the case where the applicant cannot obtain the executed assignment due to the refusal, illness,
death, or absence of the inventor, the assignment can be substituted by a statement of declaration
and related evidential documents. The statement of declaration shall state the name of the
invention, the source of right, and declaration to take responsibility of all legal liability. The
evidential documents refer to documents that can prove the authenticity of the applicant's
statement. For example:
(1)
medical certificates of the inventor, to claim that the inventor cannot sign the assignment due
to illness;
(2)
an assignment signed by the successor and documents proving the inheritance (e.g. the will,
the Court verdict, etc), to claim that the inventor is deceased;
(3)
the employment contract or documents proving that the invention is made in the performance
of his/her job duties, to claim that the invention is made in the performance of his/her job
duties or during the period of his/her employment.
Can a patent conversion application be filed after the decision granting a patent has already
been made?
No, after a written decision granting a patent has been served, a patent conversion cannot be
made.
What is a conventional right of priority?
A conventional right of priority was first set forth in Article 4 of the Paris Convention, which
stated that any nationals of any countries or associate countries of the Union who has duly filed
a patent application in one of the countries of the Union shall enjoy, for the purpose of filing in
the other countries, a right of priority for a twelve-month or six-month period depending on the
type of patent. The purpose of the system is to protect the inventor after he/she has filed a patent
application in one of the countries in the Union from not being able to comply with the
patentability of patents in other countries in the Union due to the disclosure, implementation
or filing by someone else.
According to the Patent Act, a patent applicant, who has legally filed his/her first patent
application in a member of the World Trade Organization (hereinafter referred to as the "WTO")
or in a foreign country which allows ROC nationals to claim priority based on reciprocity and has
filed his/her patent application for the same techniques in the ROC within twelve (12) months
(six (6) months for a design) from the filing date of his/her first patent application in said foreign
country, may claim the filing date of said foreign application as the priority date, and use it as the
reference date in determining whether the invention complies with patentability of patents, such
as novelty, loss of legal fictitious novelty, inventive step, and first to file.
What is the procedure for claiming a conventional priority? Which evidential documents should
be submitted?
A patent applicant, who has legally filed his/her first patent application in respect of an invention
in a member of the WTO or in a foreign country which allows ROC nationals to claim priority
based on reciprocity and has filed his/her patent application for the same invention in the ROC
within twelve (12) months (six (6) moths for a design) from the filing date of his/her first patent
application in said foreign country, may claim a priority for his/her ROC application. For a patent
application claiming priority, when filing for patent, the applicant shall simultaneously file a
statement and declare in the application the filing date(s) and the application number(s) of the
corresponding foreign application(s) as well as the foreign country(ies) in which the same
application was filed. The certified documents from the foreign government(s) in which the
application was filed shall be submitted within four (4) months from the filing date.
Why are the descriptions of the prior art required in the specification when filing an invention or
a utility model patent application?
When a patent applicant files an invention or a utility model patent application, the specification
shall contain descriptions indicating the prior art to the applicant's understanding, and preferably
citing the documents reflecting such art, as set forth in Item 2, Paragraph 1, Rule 17 of the
Implementing Regulations of the Patent Act. The purpose of this requirement is to allow those
having ordinary knowledge in the relevant art to understand the disclosure and practice the same.
This will also allow the examiners at TIPO to determine the background and the course of the
invention or creation correctly, which may shorten the examination period for said application.
The examiners may also use it as a reference to determine the patentability of the invention.
Therefore, if the prior art is already in TIPO's domestic and foreign patent database, the nationality,
application number, and publication date of said prior art should be indicated; if the prior art is not
in TIPO's database, the applicant should submit photocopies of the related information along with
the application. For a publication, the author, the name of the publication, the publisher and the
publication dated, are required.
If an applicant intends to file a patent application not only in the ROC but also in foreign
countries, is there a time limit? Can the filing date of the application filed in the ROC be used
in the foreign applications?
There is no time limit if the applicant intends to file a foreign application after the application
has been filed in the ROC. However, please note that most foreign patent laws also adopt the
first to file principle. Therefore, apart from claiming priority right, there is a possibility that
the application may not obtain patent because a third party has filed it first; disclosure should
also be avoided to prevent loss of novelty. If the foreign application is being filed in a member
of the WTO or in a foreign country which allows ROC nationals to claim priority based on
reciprocity, said foreign application may claim a priority in the foreign country within twelve
months from the filing date of the application filed in the ROC. Once the priority is accepted,
the priority date shall be used as the reference date in the patentability examination.
In the case where a new application has been filed with the specification written in a foreign
language, and fifteen months has lapsed from the priority date when making a supplement or
amendment for the Chinese specification, in order to coincide with the drafting of the Chinese
specification, can the amended specification in the foreign language be filed at the same time?
The supplement or amendment of a specification or figure shall be done within fifteen months
from the filing date of an application, where the starting day is the day next to the earliest priority
date when priority is claimed. The fifteen (15) months limitation of supplement or amendment
applies only to Chinese specification and there is no limitation on the supplement or amendment
for a specification written in a foreign language. In practice, the change of the specification
written in a foreign language, if any, can be filed together when the Chinese counterpart is to be
supplemented or amended.
What is the "invention patents early disclosure" system?
The examination period for an invention patent application is longer if the disclosure is laid-open
after the approval of the patent by a written decision after the substantive examination. This may
result in a third-party's repetitive research, investment or application on the same technical
disclosure, which cannot serve the intent of the patent system to its full extent. The invention
patents early disclosure system refers to the laying-open of a patent application after a period of
eighteen (18) months from the filing date (earliest priority date, if priority is claimed) of such
patent applications. Being laid-open reveals the technical disclosure to the public, and prevents other businesses from wasting their resources on repetitive research and investment. Moreover,
an invention that is laid-open allows a third-party to obtain relevant technical information in
advance, to conduct further research and development, and to enhance the competitiveness of
the industry.
What is a "substantive examination"?
Requests for a substantive examination of an invention refers to, where any person, after an
invention patent application is filed, would like to know if such an invention complies with the
patentability requirements. He/she may, within three (3) years from the filing date of the invention
patent application, apply to TIPO for substantive examination. If a substantive examination is not
requested within the three-year period, the application shall be deemed withdrawn. Any invention
application that has been laid-open, shall be deemed prior art, and can be used as evidence to
determine if other inventions comply with patentability.
What is the difference between the laying-open and publishing of an invention patent?
The publishing of an invention patent refers to the publication of the patent in the Official Patent
Gazette, after a substantive examination (or formality examination) decision has been made, and
the issue fee and the first year annuity have been paid by the applicant within three (3) months
after the service of the written decision. The laying-open of an invention patent refers to the
revelation of an invention patent in the Early Laid-Open Patent Gazette after a period of eighteen
months from the filing date (earliest priority date, if priority is claimed) of such patent application.
After it is considered through examination to have nothing that is contrary to the formality
requirements that may render it not to be laid-open. Therefore, a patent being published means
that the patent is granted and an invention patent being laid-open only refers to the laying-open
of the technical disclosure, but not the granting of a patent.
When should an invention patent application be laid-open?
According to Article 36 of the Patent Act, after receipt of the documents of an invention patent
application, if the application is considered through examination to have nothing contrary to the
formality requirements that may render it not to be laid-open, TIPO shall have such application
laid-open after a period of eighteen (18) months from the filing date (earliest priority date, if
priority is claimed) of such patent application.
If an invention application is found not patentable before it is laid-open, will it still be laid-open?
Yes, if an invention application is found not patentable before it is laid-open, it will still be
laid-open in the Early Laid-Open Patent Gazette.
When an invention patent application is being laid-open, which items shall be open to the public?
Information related to the early disclosure of inventions shall be published in the "Early
Laid-Open Patent Gazette." Pursuant to Paragraph one, Rule 54 of the Implementing
Regulations of the Patent Act, the following items shall be open to the public:
(1)
Application number;
(2)
Number of laying-open;
(3)
Date of laying open;
(4)
Date of laying open;
(5)
Filing date;
(6)
Filing date;
(7)
Filing date;
(8)
Name(s) or title(s), domicile/residence or business authority of the applicant(s);
(9)
If a patent attorney is entrusted, the name of the patent attorney;
(10)
Abstract of the invention;
(11)
A figure which best characterizes the technical feature of the invention;
(12)
Where the priority prescribed under Paragraph 1, Article 27 of the Patent Act was claimed,
the name of the foreign country(ies) in which the corresponding foreign patent
application(s) was (were) first filed, application number(s) and filing date(s) thereof;
(13)
Where the priority prescribed under Paragraph 1, Article 29 of the Patent Act was claimed,
the application number(s) and the filing date(s) thereof;
(14)
Where the priority prescribed under Paragraph 1, Article 29 of the Patent Act was claimed,
the application number(s) and the filing date(s) thereof;
(15)
Whether a request for supplement or amendment is made.
If a supplement or amendment to the specification is made before the laying-open, will the
original specification be laid-open or the amended one?
When an invention patent application is laid-open, the original specification and all amended
version(s) will be disclosed, and the content of the publication gazette is in accordance with the
original specification. However, amendment made after fifteen (15) months from the filing date
will be noted on the gazette by TIPO.
If an applicant is dissatisfied with a rejection decision rendered for an invention patent
application, how should it be remedied?
In case of dissatisfaction with a rejection decision rendered for an invention patent application,
the applicant may, within sixty (60) days from the date the rejection decision is served, apply for
a re-examination.
If an applicant is dissatisfied with a rejection decision rendered after the re-examination for an
invention patent application, how should it be remedied?
In case of dissatisfaction with a rejection decision rendered after the re-examination for an
invention patent application, the applicant may within thirty (30) days from the date the rejection
decision is served, file an administrative appeal through TIPO to the Administrative Appeals
Commission of the Ministry of Economic Affairs.
How does one calculate the patent term?
The granted patent shall be effective on the date of publication thereof. The patent term of an
invention patent shall be twenty (20) years from the filing date of the invention patent application;
the patent term of a utility model patent shall be ten (10) years from the filing date of the utility
model patent application; the patent term of a design patent shall be twelve (12) years from the
filing date of the design patent application.
Does the protection of patent begin on the filing date?
No. The protection of patent begins on the date of publication of the granted patent.
What are the reasons for extinguishment of a patent?
According to Article 66 of the Patent Act, an invention patent shall extinguish ipso facto under
any of the following circumstances:
(1)
In the case of expiration of the patent term of a patent, from the day following the expiration;
(2)
In the case of death of the patentee without an heir, from the date the patent accrues to the
Treasury as provided for in Article 1185 of the Civil Code;
(3)
In the case of the patentee's failure of effecting the payment of a patent annuity for the second
year or any year thereafter within the grace period, from the day following the expiration of
the original statutory period for such payment; except for the patent to be reinstated under
Paragraph Two, Article 17 of the Patent Act; or
(4)
In the case of voluntary abandonment of a patent, from the date of the patentee's written
declaration to such effect.
What are the general fees related to a patent application?
The general fees related to a patent application are the filing fee, and for an allowed patent, the
issue fee and annuities. Please refer to the Rules for Patent Fees for more details.
If the annuities are not paid within the regulatory period, what should be done?
The first year annuity and the issue fee shall be paid within three (3) months commencing
from the date after the service of the written decision of approval or rejection If aforesaid fees
are not paid before the expiration, the patent shall become irrevocably non-existent. In case
the annuity payable for the second year or each year thereafter is not paid within the regulatory
period for the annuity payment, it may be paid later within six (6) months after expiration of
the said regulatory period provided, however, that the amount of the late payment shall be
twice as much as the regular amount of the annuity. If aforesaid surcharge is not paid before
the expiration of the extension, the patent shall become irrevocably non-existent from the
next day after the expiration of the original deadline.
