Protecting Your IPR in Taiwan: A Toolkit
Last Updated: June, 2010
Taiwan's current Patent Act has its origins in legislation drafted in 1944. Throughout the past half century, as Taiwan's development model shifted from agriculture and basic manufacturing to high tech industrial production, the demand for greater patent protection increased. This prompted major revisions to the Patent Act in 1979 and 1986. In 1979, just 2,959 patent certificates were issued by Taiwan. This number climbed to almost 20,000 in 1990, about 25,000 in the year 2000, and reached 58,306 in 2005, before slipping back down to 49,315 in 2006. In 2008, the last full year for which TIPO has published statistics, Taiwan issued 42,366 patent certificates. Currently, Japanese companies top the list in total number of patents granted per year. U.S. companies, however, including IBM, Intel, Hewlett-Packard, and Applied Materials, also account for a high percentage of patent issuances in Taiwan.
In the mid-1990s, Taiwan began an effort to form bilateral patent recognition agreements with its key trading partners including the United States, Australia, Japan, Germany, and the United Kingdom. In 1999, Taiwan folded the National Bureau of Standards into the Taiwan Intellectual Property Office (TIPO) under the Ministry of Economic Affairs. TIPO's key roles include advocating rigorous IPR legislation, providing related training to Taiwan's judiciary, and improving the efficiency of the patent examination system. Taiwan joined the WTO in 2002 and agreed to comply with the terms of the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPs). To simplify filing procedures, Taiwan amended its Patent Act in 2003, taking effect July 1, 2004. New proposed amendments have been drafted, but as of early 2010, the Executive Yuan (EY) had not submitted the amendments to the legislature.
Under Taiwan's Patent Act, patent protection is available in three forms – invention patents, design patents, and utility models. An invention patent has a term of twenty years and is analogous to a utility patent in the United States. A design patent has a term of twelve years and is similar in function and scope to a design patent in the United States. The third patent variety, the utility model, has a term of ten years and is most similar to a U.S. improvement patent. Protection for all three varieties may be curtailed if the patent owner fails to pay administrative fees or renounces the patent.
Invention and Utility Model Patents
Approval for invention patents is subject to the criteria outlined in Articles 21 through 24 of the Patent Act. Article 21 states that an "invention" must consist of a "creation of technical concepts by utilizing the rules of nature." Utility models are defined under Article 93 as "any creation of technical concepts by utilizing the rules of nature, with respect to the form, construction, or installation of an article." In general, utility models must demonstrate an improvement to or enhancement of the features of an existing invention. Both inventions and utility models must be industrially applicable as stated in Articles 22 and 94 of the Patent Act.
Article 109 of the Patent Act defines a design as "any creation made in respect to the shape, pattern, color, or combination thereof of any article." Visual distinction is integral to any design patent. Like invention and utility models, designs must also be industrially applicable. The following items are not eligible for design patents: an article in which the shape is solely dictated by its function, works of fine art, integrated circuit and/or electronic circuit designs, articles that are contrary to public order or health, and designs that are similar or identical to a political party flag, national flag, portraits of Sun Yat Sen, military flags, and official government seals, emblems and medals.
General Patent Ineligibilities
Inventions, utility models, and designs that have been published or put into public use prior to filing a patent application are not eligible for patents unless one of the following conditions has been met: 1) The invention/utility model is the result of research or an experiment; 2) The invention/utility model had been exhibited at a government-sponsored exhibition; or 3) The invention/utility model had been disclosed in an occasion not intended by the patent applicant.
Under Article 24, the following items cannot be patented in Taiwan:
- Animals, plants, and essentially biological processes for production of animals or plants, except the processes for producing microorganisms;
- Diagnostics, therapeutic, or surgical operation methods for the treatment of humans or animals;
- An invention that is contrary to public order, morality, or public health.
PROTECT YOUR PATENT
When deciding whether to register a patent in Taiwan, companies should keep in mind the following:
- Taiwan considers patent applications in the order in which they are filed. Note that this differs from the "first to invent" patent priority system in the United States.
- Nationals of countries that belong to the WTO may claim priority registration if an application for the same invention is filed in Taiwan within twelve months of the original filing date in a WTO member country.
- Taiwan is not a member of the Patent Cooperation Treaty (PCT). Therefore, the thirty-month filing period to claim priority registration in PCT member nations does not apply in Taiwan. All applications by those with a WTO or treaty-based claim to priority registration must be filed within twelve months of the original filing date as stated above.
- Patent applicants that do not have a residence or business office in Taiwan must appoint an agent to submit patent applications and handle all patent-related matters on their behalf. A patent agent must be certified in Taiwan.
Step 1: Obtain Qualified Counsel
Patents are complicated. Because it is often important to seek patent protection in multiple countries, and because disclosure (both planned and inadvertent) in one country may result in loss of patentability in others, inventors should obtain legal advice as soon in the process as possible. A qualified patent attorney will be able to help navigate these matters and select the appropriate counsel and agents to assist in Taiwan.
Step 2: Determine Whether You Have a Priority Claim
A person who has filed an application for an invention or utility model patent in any country that is a member of the WTO may, within twelve months of the original filing, file subsequent patent applications in other countries claiming the filing date of the original application. The grace period for design patents in Taiwan is six months. Priority filing dates allow the inventor to avoid the possibility that a patent in one country could be granted to someone else in a second country. They also prevent disclosure in one country from affecting an invention's patentability in another country. If priority claims do not apply, patent protection in Taiwan is generally based on the principle "first to file" in contrast to the "first to invent" system employed in the United States.
Step 3: Select a Reputable Taiwan Patent Agent
Foreign applicants without a residence or business office in Taiwan are required to submit patent applications through officially designated agents. Taiwan businesses do not face this requirement. Patent agents should be able to advise the applicant on the intricacies of filing and protecting a patent in Taiwan. Ideally, a patent agent should be familiar with the subject area of the patent.
Step 4: Prepare the Required Paperwork
Taiwan patent applications, like those in other countries, are complicated and require substantial documentation. Applications must be translated into Chinese and include any relevant drawings. If applicable, the application should also provide details of any priority claims including filing date abroad and the corresponding foreign application number. A specification must also be included, stating the following:
- Abstract of the invention
- Scope of claims
Design patent applications require drawings or figures in addition to a description of the design. Drawings and descriptions for all patent applications must be sufficiently clear such that ordinarily skilled persons in the relevant field understand the contents and practice of the invention or design. Note that seemingly minor translation discrepancies at the outset of a patent filing may lead to significant enforcement problems later on. It is, therefore, often useful to have the patent application checked independently prior to filing, and to take steps to ensure that the agents filing the application understand your technology and the implications of the claim language.
Step 5: Submit the Application
Patents are filed with the Taiwan Intellectual Property Office (TIPO) in Taipei. Note that if an applicant does not reside in or have a business office in Taiwan, a licensed patent agent must file the application on his or her behalf. Also, under Article 28, if claiming priority based on a patent application in a foreign country, the applicant must submit documents issued by the government of that country as evidence of the foreign application.
Step 6: Examination
Once the application is submitted, it will undergo an examination to ensure it meets the statutory filing requirements. If there is no cause for rejection, patents for utility models and designs will be issued. Applications for invention patents that meet the required criteria will be forwarded to substantive examination upon the request of the applicant. Applicants must file a request for substantive examination within three years of the filing date.
Step 7: Publication (Inventions Only)
If TIPO determines that the application meets statutory requirements, it will "lay open" the patent application eighteen months after the filing or priority date by publishing it in the Patent Gazette. Any information published prior to the filing or priority date would be considered prior art of the application.
Step 8: Substantive Examination (Inventions Only)
Applicants for inventions have up to three years from the date of filing to request a substantive examination. If a substantive examination has not been requested within the three-year period, the application will be automatically withdrawn. At the discretion of the patent examiner, applicants may be required to perform relevant experiments, prepare additional models or samples, or appear for an in-person interview as deemed necessary.
Step 9: Granting of Patent Rights
If after all relevant examinations (formality for utility models and designs, substantive for inventions), TIPO concludes that the application conforms to the Patent Act, it will issue the patent and publish the claims and drawings relevant to the application. The issuance fee and first year annuity for the patent must be paid by this time. Once the patent is granted, any person may apply for access to the written decision of the examination, specifications, drawings, and related application materials. If a patent application is denied, TIPO must provide a written explanation of denial to the applicant.
Step 10: Reexamination
An applicant dissatisfied with TIPO's examination of a patent application may apply for re-examination within sixty days of the date of the rejection decision. The applicant may be required to amend the specifications or drawings at this time.
As a condition of its WTO accession, Taiwan has strengthened its patent legislation. However, laws alone cannot prevent IPR violations. A well-developed, comprehensive IPR strategy should be a part of any company's plan for conducting business in Taiwan and the greater China region. To prevent unauthorized use of IPR, a company must identify its IPR, control, and protect it.
Engage the assistance of legal professionals with both Taiwan and IPR expertise early in the process, and involve them in your overall IPR business strategy. Membership in industry or professional organizations may also be of assistance.
Patent infringement refers to exploitation of a patent without the authorization of the patent holder, including:
- Manufacturing patented products
- Making an offer for sale, selling, using, or importing patented products
- Using a patented process
- Using, selling, or importing articles made through direct use of a patented process
Article 56 of the Patent Act states, "the scope of an invention's patent rights shall be determined based on the claim(s) set forth in the specification of the invention. The descriptions and drawings of the invention may be used as a reference when interpreting the scope of the claims in the patent application."
Under Article 84 of the Patent Act, patentees and exclusive licensees may pursue claims for damages within two years from the time they become aware of the infringement, or within ten years from the time of the infringing act if they were not previously aware of it.
Possible civil remedies include:
- Claims for damages suffered
- Destruction of the infringing products
- Destruction of the materials used to make the infringing products
- Publication of the court ruling in a newspaper
- Any combination of the above
It is important to note that Taiwan's judicial system does not incorporate the U.S. process of discovery. In cases involving small, non-listed companies, it may be difficult to prove the amount of damages because financial records may not be readily available to prosecutors.
Article 216 of the Civil Code establishes the guidelines for determining damages. These are further addressed in the Patent Act under Article 85, which identifies two ways in which to quantify the damages caused by an infringement. The first involves subtracting a) the profit earned by the patentee through the use of his/her patent after the infringement, from b) the profit normally expected through use of the patent over the same period of time. The second method for determining damages considers the profit derived from the infringer's sale of the infringing goods. In either case, if the court determines that the infringing act was intentional, it may increase the amount of damages allowed.
As a rule, it is advisable to maintain copies of the patent certificates, sketches, models, or drawings related to the creation of the patented work. Such information may be of use if pursuing a claim in Taiwan.
Patents are extremely complex, and understanding a patent often requires scientific expertise. Taiwan is making a strong effort to educate the judiciary about patent issues. In 2008, Taiwan implemented a new IP Court with the intention to appoint judges with high levels of training in both IPR law and relevant technologies. The IP Court has its own internal technical experts, taken from the Taiwan IP Office, to assist in the review of cases before it.
Patent violations are no longer subject to criminal prosecution in Taiwan.
Anyone may file a patent invalidation request as long as a patent remains valid. All invalidation requests must be submitted to the Taiwan Intellectual Property Office (TIPO). Invalidation requests must clearly articulate the reasons for the proposed invalidation and provide relevant documentation.
Q: What types of patents are available under the current Taiwan Patent Act?
There are three types of patents under Taiwan patent law:
- Invention: Valid for twenty years from the date of application in Taiwan, subject to payment of annual fees.
- Utility Model: Valid for twelve years from the date of application in Taiwan, subject to payment of annual fees.
- Design: Valid for ten years from the date of application in Taiwan, subject to payment of annual fees.
Q: Who may qualify for priority patent registration in Taiwan?
A person who has filed an application for an invention or utility model patent in any country that is a member of the WTO or in a country that has a bilateral patent recognition treaty with Taiwan may, within twelve months of the original filing, file subsequent patent applications in other countries claiming the filing date of the original application. The grace period for design patents in Taiwan is six months.
Q: What are the requirements for filing a patent application in Taiwan?
Taiwan patent applications, like those in other countries, are complicated and require substantial documentation. Applications must be translated into Chinese and may include any relevant drawings, details of any priority claims including filing date abroad and corresponding application number, and a specification including the title, description, abstract of the invention, and scope of claims. Design patent applications require drawings or figures in addition to a description of the design. Drawings and descriptions for all patent applications must be sufficiently clear such that ordinarily skilled persons in the relevant field understand the contents and practice of the invention or design.
Q: What can be done if a patent application is rejected?
An applicant dissatisfied with TIPO's examination of a patent application may, within sixty days of the date of the rejection decision, apply for reexamination.
Information on organizations, official agencies, and law firms handling IPR-related issues is available here.
Links to websites outside the U.S. government or the use of trade, firm, or corporation names are provided for the convenience of the user. Such links and/or use do not constitute official endorsement or approval by the U.S. government of any private sector or non-U.S. government website, product, or service.
The information provided above by no means constitutes legal advice and should not be a substitute for advice of counsel. Its intended purpose is to provide an overview of Taiwan's IPR environment, available enforcement mechanisms, and Taiwan offices sharing jurisdiction over IPR protection and enforcement. We recommend that U.S. companies seeking to do business in Taiwan or facing IPR infringement issues retain qualified U.S. and/or Taiwan legal counsel and pursue their rights through Taiwan's IPR enforcement regime.