Frequently Asked Questions: Patents in Taiwan
Q1. I would like to ask about new construction methods in the field of architecture. What type of patent shall I apply for in Taiwan?
A: Under Taiwan’s Patent Act, there are three types of invention, utility model and design patent in Taiwan. Among these, only invention patents mat protect methods. As new construction methods fall within the category of methods, they must be filed as invention patent applications in order to comply with the regulation.
Q2. A utility model patent application is rejected, within what time period may I request conversion to an invention patent?
A: The applicable time limits for requesting conversion depend on the status and type of the original application:
If the original application is still pending, a request of conversion shall be requested before the approval decision or dismissal decision is served.
If the original application is an invention or design application and a refusal decision has been rendered, a request of conversion shall be requested within 2 months after from the date on which the written decision of examination or re-examination is served.
If the original application is a utility model application and a refusal decision has been rendered, a request of conversion shall be requested within 30 days from the date on which the refusal decision is served.
Q3. A Taiwan patent application in claims priority from a U.S. application. A Japanese patent application also claims priority from the same U.S. application, and the Japanese application has now been granted May I request participation in the PPH program before the Taiwan Intellectual Property Office (TIPO)?
A: Yes. Pursuant to item 4 of Section 1of the PPH MOTTAINAI program between the TIPO and the Japen Patent Office (JPO), where a Taiwan application and a Japanese application share the same priority document, and the Japanese application contains allowable claims that correspond to the claims of the Taiwan application, the Taiwan application satisfies the requirement for filing a PPH request with TIPO.
Q4. An application filed in a foreign language originally contained 6 claims, but only 5 claims are included when submitting the Chinese description. May this discrepancy be explained in the remarks, or should six claims be submitted in Chinese first and then amended to 5 claims?
A: Where an applicant is unable to submit the specification, claims and drawing(s) in Chinese at the time of filing, the application may be filed in a foreign language. If the Chinese translation is supplemented within the prescribed period, the filing date shall be the date on which the foreign-language application was originally filed.
In principle, the submitted Chinese translation should be a complete and accurate translation of the foreign-language text filed at the time of application and shall serve as the basis for examination. During the formality examination, if TIPO finds the submitted Chinese translation is clearly inconsistent with the application in foreign language, such as a discrepancy in the number of claims, TIPO will notify the applicant to confirm the discrepancy within a specified period. If the applicant submits a revised Chinese translation within the specified period, the originally submitted Chinese translation hall be deemed not filed, without affecting the filing date.
Alternatively, the applicant may file a response explaining that the Chinese translation does not extend beyond the scope disclosed in the foreign-language application and therefore does not require resubmission. If the applicant neither submits a revised Chinese translation nor files a response within the prescribed period, the prosecution will proceed based on the originally submitted Chinese translation, and the filing date will remain unaffected.
Whether the originally submitted Chinese translation extends beyond the disclosure of the foreign-language application, thereby resulting in unpatentablility or withdrawal of patent rights, shall be determined during substantive examination or invalidation action.
Resource:
The above questions are selected and translated from the Frequently Asked Questions published by the Taiwan Intellectual Property Office (TIPO) in May 2024. Translation prepared by the ALIPO team.