What is a patent?
When we want to protect the rights of an invention or a creation, we apply through the Taiwan Intellectual Property Office (hereinafter referred to as "TIPO") for a patent. Patent rights are granted after the application is examined and approved under the Patent Act. The patentee of a patented article shall have the exclusive right to preclude others from manufacturing, selling, contracting to sell or use, or importing the patented article for any of the above purposes without his/her prior consent. The patentee of a patented process shall have the exclusive right to preclude others from using such process and from using, selling, contracting, or importing finished products that are made by the patented process without his/her prior consent. These rights are called "patent rights."

What is an invention patent?

Pursuant to the provision of Article 21 of the Patent Act, an invention refers to any creation of technical concepts by utilizing the rules of nature. Thus, it can be defined that an invention is a creation of technical concepts that utilizes the rules of nature to reflect on the application of an article or a method.

What is a utility model patent?

Pursuant to the provision of Article 93 of the Patent Act, a utility model refers to any creation of technical concepts by utilizing the rules of nature, in respect of the form, construction or installation of an article. Thus, it can be defined that a utility model is a creation of technical concepts that utilizes the rules of nature to reflect the innovation of a form, construction, or installation of an article that possesses a new purpose or improved efficacy.

What is a design patent?

Pursuant to the provision of Paragraph 1, Article 109 of the Patent Act, a design refers to any creation made in respect of the shape, pattern, color, or combination thereof of an article through visual appeal. Thus, it can be defined that a design uses the shape, pattern, color, or combination of an article to enhance its quality, affinity, and value through visual effects in order to increase market competitiveness and visual contentment.

How does one distinguish a design patent from a utility model patent and an invention patent?

A design patent should emphasize the enhancement of its visual effect to visually attract general consumers and to generate purchasing interest. Thus, a design uses the shape, pattern, color, or combination of an article to enhance its quality, affinity, and value through visual effects in order to increase market competitiveness and visual contentment. However, a utility model patent and an invention patent aim to improve an article's convenience in its function, technique, manufacturing and application.

What is the non-statutory subject matter for an invention patent?

Although some technologies meet all patent conditions, they are not granted invention patents according to the Patent Act. These technologies are referred to as non-statutory subject matter. According to Article 24 of the Patent Act, non-statutory subject matter for an invention patent includes: (1) Animals, plants, and essentially biological processes for the production of animals or plants, except for processes that produce microorganisms; (2) Diagnostic, therapeutic or surgical operation methods for the treatment of humans or animals; and(3) An invention which is contrary to public order, morality or public health.

What is the non-statutory subject matter for a utility model patent?According to Paragraph 1, Article 97 of the Patent Act, the non-statutory subject matter for a utility model patent includes: (1) Where the utility model is not directed to the form, construction or installation. For example, a process patent can only be applied as an invention, not a utility model; (2) A utility model patent application which is contrary to public order, morality or public health;(3) Where the specification, claims and drawings are in violation of the written description requirement prescribed in Paragraphs 1 or 4 of Article 26, which shall apply mutatis mutandis to utility model patents under Article 108;(4) Where the utility model is in violation of the unity of invention requirement prescribed in Article 32, which shall apply mutatis mutandis to utility model patents under Article 108; or(5) Where the specification, claims and drawings fail to disclose essential matters or are obviously indefinite. This refers to obvious flaws that can be identified in a formality examination.

What is the non-statutory subject matter for a design patent?

According to Article 112 of the Patent Act, non-statutory subject matter for a design patent includes: (1) An article of which the shape is solely dictated by the functions of said article; (2) A pure fine artistic creation or work;(3) Layout of integrated circuits and electronic circuits;(4) An article which is contrary to public order, morality or public health; and(5) An article of which the shape is identical or similar to a political party flag, the national flag, a portrait of the National Father of the ROC, the national emblem, military flags, an official seal, or a medal awarded by the government.

Why can't a discovery be listed as an eligible type of invention patent?

This is because creativity is one of the essential elements of an "invention." Therefore, the discovery of natural matters and phenomenon, such as "minerals," is merely an act of discovery, and not an act of creation or a creation of technical concepts utilizing the rules of nature. Therefore, discovery is not an eligible type of invention. However, creation obtained from natural matters due to the diligence and creativity of a person (such as chemical substances) can be deemed an invention. In other words, turning a discovered natural phenomenon into an industrial applicable creation of technical concepts is considered an "invention" and not merely an act of discovery.

Can a patent be granted to computer software?

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.

Are methods of product inspection subject to patent protection?

Methods of product inspection can be protected by patents as long as they are creations of technical concepts by utilizing the rules of nature. However, if the methods are created using man-made rules or methods that are not related to the utilization of the rules of nature, they cannot be patented.

Are colors subject to design patent protection?

According to Paragraph 1, Article 109 of the Patent Act, colors are creations that are protected by design patents. If colors are claimed, the color scheme showing the applied colors of the article shall be submitted with the statement of the industrial color guide codes for all colors used, or with color cards.

Can words be treated as patterns?

The term "patterns" in the Patent Act refers to lines or line-patterns used to decorate the surface of an article. In principle, words cannot be deemed as patterns, but can be important elements of a pattern.

After an application has been filed, is it possible for it to be disclosed?

Apart from invention applications that adopt a laid-open system where all applications shall be laid-open eighteen (18) months from the filing date (earliest priority date, if priority right is claimed), before an application is published or laid-open, its contents shall be kept confidential and will not be disclosed. Any improper disclosure is subject to criminal liability and civil liability of compensation for damage.

Is it necessary to file an application in the ROC if it has already been filed in a foreign country? To what matters should attention be paid?

Patents are territorial. Even though the applicant has filed an application in a foreign country, if he/she intends to seek patent protection in the ROC, an application should still be filed in the ROC. The applicant should also pay attention to the priority date if priority right is claimed. If the application exceeds the prescribed period for claiming priority right, or if the corresponding foreign application had already been laid-open or published before filing an application in the ROC, the patent will lose its novelty.

What elements should be considered in filing a foreign or an ROC patent application for an invention or a creation?

To what matters should attention be paid when filing a foreign application?  Technical innovation, market potential, and technical transfer feasibility are factors in determining the appropriate time for filing a corresponding patent application for an invention or a creation in foreign countries or other areas. Normally, a patent is filed first in the ROC, then in foreign countries. For filing foreign applications, foreign patent attorneys in the designated foreign countries should be entrusted in prosecuting the applications. The applicant should also avoid disclosing the invention or creation before filing to prevent loss of novelty. Furthermore, after filing in the ROC, if it is necessary to file a foreign corresponding application, the applicant should do so as soon as possible to avoid loss of novelty, and vice versa.

Who can file a patent application?

According to Article 25 of the Patent Act, a patent application shall be made by the person entitled to file such application. According to Article 5 of the Patent Act, the term "the owner of the right to apply for patent" shall mean any inventor, creator or his/her assignee or successor. If a patent application is filed by someone who does not have the right to apply for such patent, it can be deemed a reason for revoking the patent.

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 documents should be submitted when filing a utility model patent application?

The application for a utility model 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 drawing should be drafted are stated in detail in the Implementing Regulations of the Patent Act.

What documents should be submitted when filing a design patent application?

The application for a design patent shall be made by the person entitled to file the patent application by submitting to TIPO an application and description of the drawings. Rules governing how the application and description of drawings should be drafted are stated in detail in the Implementing Regulations of the Patent Act.

Is there a specific format for an application? How do I obtain one?

According to Rule 2 of the Implementing Regulations of the Patent Act, there is a specific format for an application.  TIPO has formulated request forms that comply with the regulations, and the applicants can download the forms for free from TIPO's website (http://www.tipo.gov.tw); "Patent" "Patent applications forms and instructions."

To what matters should attention be paid when filling out a request form?

When filling out a request form, the content has to be written completely and honestly. For any circumstances that need to be noted, a statement should be made in the form. The application should be affixed with the signature or seal of the applicant, or may be affixed only with the signature or seal of the patent agent, if already appointed. To learn how to fill out the application, the Writing Instructions should be consulted.

Are there any specific regulations governing the language and writing methods of the application documents?

The application documents should be printed in Traditional Chinese characters in black, on national standardized A4 paper. The Chinese name(s) of the applicant(s) and inventor(s)/creator(s) should be written in Traditional Chinese. Simplified Chinese, or Kanji in Japanese or Korean are not accepted. The foreign language name(s) of the applicant(s) and inventor(s)/creator(s) should be capitalized in their foreign language. The specification of an invention or a utility model patent, and the description of drawings of a design patent should be written from top to bottom, and from left to right. There should be twenty-four (24) lines per page, and twenty-five (25) words per line. There should be a two centimeters margin at each side of the page.

How should a patent application be submitted?

A patent application can be submitted either in person or by mail. An applicant can submit the application with TIPO or the collection counters in the Hsinchu, Taichung, Kaohsiung service centers in person; or by registered mail at the post office.

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.

What should be done if there are two or more applicants?

When the right to apply for patent is jointly owned by two or more people, the application should be filed jointly by all joint-owners. However, where two or more persons begin any patent-related procedure(s) other than filing a patent application, each of them may act upon such procedure(s) independently, except for filing a request for withdrawing or abandoning a patent application, or for dividing a patent or converting a patent application, or for filing any application otherwise required in the same Act which shall be executed and filed by all joint-owners. Nevertheless, if a representative is designated by a mutual covenant of all joint-owners, such a covenant shall prevail. If a representative is not appointed, one of the joint-owners shall be appointed as the recipient of service of the documents. In the absence of such a representative, the first applicant indicated in the list of joint-applicants shall be the recipient of service.

Can the ROC branch of a foreign company be a patent applicant?

When the ROC branch of an approved foreign company files an application, the name of the foreign company shall be the applicant, and the person in charge of the ROC branch shall act as the representative in order to file the application. If the address of the ROC branch is used as the address of the applicant, it is not necessary to designate a patent attorney.

Is it required to designate a patent attorney to act on the applicant's behalf when filing an application?

A patent applicant who has a residence or business office in the territory of the ROC can file and prosecute an application on his or her own, or designate an agent to act on his/her behalf to file the patent applications and prosecute patent-related matters. However, a patent applicant who has no residence or business office in the territory of the ROC shall designate an agent to act on his/her behalf to file patent applications and prosecute patent-related matters.

Are personal identification documents required when the applicant is a resident of China or a legal person?

Yes, a natural person should prepare personal identification documents; a legal person should prepare a Certificate of Incorporation. If the aforesaid documents are photocopies of the originals, they should be certified by institutions or civil organizations appointed by the Executive Yuan; or the applicant (or agent) shall declare that the photocopies are identical to the originals.

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.

What is a "novelty grace period"?

Prior to filing a patent, if the invention or utility model has been published or put to public use, or has become known to the public, it constitutes a prior art and loses its novelty . However, a grace period may be claimed, if, 1) the publication is a result of research or experiment; 2) the publication is a result of being exhibited at an exhibition sponsored or approved by the government; 3) the invention has been disclosed in an occasion not intended by the patent applicant. In the case of the preceding causes, the applicant shall file the application within six months from the date of actual occurrence of the foregoing causes, and indicate the relevant occurrences, then publications of the techniques resulted from the relevant occurrences are considered exceptions not belonging as a part of prior art and thus do not constitute novelty bar. However, indication of the cause set forth in the above Item 3 is not limited to the time of filing. This six-month period is referred to as the "grace period." Similar regulations also apply to designs, but designs are designs of appearances, and do not involve research and experiment, such that research and experiment cannot serve as a reason for the grace period.

What is the procedure to claim a grace period? Which evidential documents should be submitted?

According to Article 22 of the Patent Act, an applicant claiming the application of the cause prescribed under Item 1 or 2 of Article 22, meaning, claiming the grace period, shall not only file the application within six months from the date of actual occurrences of the foregoing causes, but also indicate the occurrences and the relevant dates in his/her application and submit evidential documents within the time limit specified by TIPO.

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 an international 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.