Guide & Procedure
			Trademarks & Service Marks		Patents, Utility Models, Designs

F A Q
			Trademarks		Patents

1. Who can apply for a trademark in Taiwan?

2. How do I register a trademark in Taiwan?

3. How long does a trademark registered in Taiwan remain valid?

4. What are the procedures concerning the filing of an Opposition?

5. Can I 'register' a trademark before I'm ready to use it?

6. Can I claim priority for a trademark?

7. What will happen once a trademark is registered?

8. What are the regulations concerning the assigning of a trademark?

9. What kinds of marks are registrable in Taiwan?

1.    Who can apply for a trademark in Taiwan?

• Citizens of Taiwan.
• Applicants from other countries, provided that their home country is a member of the WTO or has a reciprocal agreement with Taiwan and accepts applications for registration of marks from citizens of Taiwan. Unless they have residence or have establishment in Taiwan, applicants from other countries must appoint a certified trademark attorney in Taiwan.

2.   How do I register a trademark in Taiwan?

See Filing Requirements : Trademarks and Service Marks.

3.   How long does a trademark registered in Taiwan remain valid?

Ten years from the date of registration, and indefinitely renewable for periods of 10 years. You must make an application for renewal a year before the preceding period ends.

4.   What are the procedures concerning the filing of an Opposition?

If an opposition is filed against your application, a copy of the opposition notice and evidence will be sent to you (or your agent), and a time period given for filing a counterstatement. If the opposition is filed, a re-examination will take place, followed by a decision of rejection or approval.

5.   Can I 'register' a trademark before I'm ready to use it?

Yes, but a genuine intention to use the mark is necessary for registration. The mark must be used within three years of the date of registration. If you cannot show proof of use of the mark within three years prior to the date of filing an application for renewal, then the mark may not be allowed to be renewed.

6.   Can I claim priority for a trademark?

Yes, provided that the corresponding trademark application is from a country which is a member of the World Trade Organization or has reciprocal agreements with Taiwan. An application for priority may be made within six months of the date of the first filed (corresponding) application, and certified copies of the corresponding application must be submitted within three months of the second filing.

7.   What will happen once a trademark is registered?

8.   What are the regulations concerning the assigning and licensing of a trademark?

9.   What kinds of marks may registered in Taiwan?

1. Who can apply for a patent?

2. What's the difference between a patent of invention and a utility model?

3. What can be patented?

4. What can't be patented?

5. May I always exploit my own invention when I obtain a patent?

6. Which application is deserved the grant of patent when two or more applications to the same invention are filed?

7. Is it necessary to conduct prior art searches before filing a patent application?

8. What is the prosecution of a patent application through to the grant of patent?

9. What recourse do I have if my patent application is rejected?

10. Are all patent applications subject to substantive examination?

11. May I prohibit a third party from making, using or selling my invention before I get a patent for the invention?

12. May I provide the Examiner with any information that the invention lacks novelty and/or inventive steps?

13. How long does a patent and utility model registered in Taiwan remain valid?

14. What are the costs of filing a patent and utility model in Taiwan?

15. Can I claim priority based on another corresponding patent application?

1.   Who can apply for a patent?

• Citizens of Taiwan.
• Foreign applicants, provided that they are nationals of a WTO member country or a country which has a reciprocal agreement with Taiwan. If you are a foreign applicant who does not have a residence in Taiwan, then you must appoint a registered patent agent in Taiwan.

The inventor (or joint inventors), his legal successor or assignee may apply for a patent. In cases where an invention was made by an employee during employment, then unless there is an agreement stipulating otherwise, the patent right belongs to the employer, who will pay the employee an appropriate compensation.

2.   What's the difference between a patent of invention and a utility model?

A patent of invention must show inventiveness, which is measured by the level of applied technology, and should involve a degree of creativity surpassing the current art; practical applicability (i.e. can be mass-produced), and novelty.

Utility models, however, are models of objects or parts of objects (appliances, instruments, tools, etc.) made for practical use, which, by means of a new shape or configuration or a new mechanism, increase or improve the handling of such objects. Utility models must be three-dimensional.

3.   What can be patented?

Any invention which is new and capable of being utilized, and does not use prior art or knowledge in a way that a person skilled in the art of the relevant field could easily complete.

4.   What can't be patented?

Medical methods such as diagnosis, surgical or therapeutical treatments of either the human or animal body; new species of animals or plants (breeding methods are allowed, however); rules or methods for playing games; scientific theories and mathematical methods; methods which can be achieved only by use of human thought or memory; computer programs; any invention deemed detrimental to public order or health.

5.   May I always exploit my own invention when I obtain a patent?

No. A patent does not entitle the patent owner to make, use or sell the patented invention; it only allows the patent owner to prevent others from doing so. To make, use or sell one's own invention may infringe another patent, particularly if an invention is an improvement on a prior invention. In this situation, producing the improved product may infringe a patent for the original product. To prevent this from occurring, infringement searches can be conducted.

6.   Which application is deserved the grant of patent when two or more applications to the same invention are filed?

The first to file rule applies in Taiwan. That is, whichever application has the earliest date of filing the application will be granted the patent, regardless of who made the invention first. It is important, therefore, not to delay filing an application.

7.   Is it necessary to conduct prior art searches before filing a patent application?

If possible, it is best to conduct a search before applying for a patent. Searches are relatively inexpensive, and if the invention has been disclosed elsewhere, then the invention may not be patentable. While this is by no means a guarantee of determining whether or not a patent may be allowed, the search will still give some idea as to whether patents or publications disclosing the invention exist.

8.   What is the prosecution of a patent application through to the grant of patent?

See Patents, Utility Models, Designs; Overview & Procedure

9.   What recourse do I have if my patent application is rejected?

Patent applications are first examined on the basis of compliance with formal requirements. If these are not fulfilled, you will be notified to fulfill these requirements within a certain time period.

Provided that the application has been found in compliance, it will then be examined as to patentability, novelty, and industrial applicability. If any claim is not deemed patentable, an office action will be issued. You must either then agree with the office action, or make a reply stating reasons for disagreement and requesting a formal decision within the prescribed period.

In the case of a decision of rejection you may apply for re-examination of the application within 30 days, and this period may be extended to 60 days. Your statement of reasons should remove all doubts and lead the Examiner to conclude that the patent should be granted.

10.   Are all patent applications subject to substantive examination?

Substantive examinations apply for patents of invention only. A patent is granted or rejected according to the examination. If the examination is favorable, a notice will be published in the Patent Gazette, to allow for third party opposition. If there is no opposition or rejection of the patent, the patent will be granted.

11.   May I prohibit a third party from making, using or selling my invention before I get a patent for the invention?

No. You can prohibit others from making, using or selling your invention only after you receive a patent for your invention. However, provisional protection is provided for a laid-open published application, which enables you to recover compensation as a license royalty for the patented invention, if granted. To do this, you must notify the third party that you are applying for a patent for your invention and that the application is laid open published.

12.   May I provide the Examiner with any information that the invention lacks novelty and/or inventive steps?

Yes. Once the application is laid-open, any party can submit information claiming that an invention lacks novelty and/or an inventive step together with related evidence. Note, however, that if an opposition is filed on the grounds that another person other than the applicant was entitled to the patent, then only the person who is entitled to the patent may make the request. Documentary evidence for all such requests must be supplied at the time of submission, with a further one-month to provide supplementary evidence. The Patent Office will then inform the applicant of the patent, who will be given a prescribed time to respond to the Opposition claims. A re-examination will then be made.

13.   How long does a patent and utility model registered in Taiwan remain valid?

14.   What are the costs of filing a patent, utility model and design in Taiwan?

See Forms

15.   Can I claim priority based on another corresponding patent application?

Yes. Priority can be claimed if the application is filed within six months from the next day of the first application in a WTO member country or country having a reciprocal agreement with Taiwan.