智權 Q & A

TIPO Patent | Trademark Q&A

A: The applicant may request to divide an application for registration into two or more applications by distributing the designated goods or services included in the original application among divisional applications which shall preserve the filing date of the original application.

     When requesting, a request for division of an application for registration shall be made by filing a written request indicating how many parts will the original application be divided into and the designated goods or services to be included in each divisional application, and a copy of the written request shall also be furnished for each divisional application along with related documents of requesting registration (the documents required by Articles 13~18 of Enforcement Rules of Trademark Act).

     When the division is allowed, the original application is closed and annotated with the division (Article 26 of Trademark Act; Article 27 of Enforcement Rules of Trademark Act). The designated goods or services to be included in each divisional application shall not overlap or go beyond the scope of designated goods or services of the original application (Article 27 II of Enforcement Rules of Trademark Act).

A: The applicant may prepare the application form for advancing the laying-open of the invention patent application and pay application fee of NT 1000 to request the advance of laying-open (Patent Act Art. 37, Second paragraph)

The applicant may submit above request upon filing the invention patent application. However, TIPO will not examine the feasibility and proceed to the laying open until the requested documents are completed.

The application form and examples for advancing the laying-open may be downloaded from TIPO website (the application form is downloadable in TIPO Chinese website)

A: No.

The aim of publishing the invention patent application is to prevent redundant research and wasted investment, and to promote industrial technology.

The invention patent application will be polished after a period of eighteen (18) months since its filing date (where a priority is claimed, the calculation of time period is set forth on the basis of the priority date).

The applicant cannot request to late-publish the invention patent application lest the above goals cannot be fulfilled.

A: Certificate of the priority right shall be original copy that is issued and signed by the patent receiving bureau of foreign country or member of WTO. The photocopy of certificate of the priority right is not allowed to be used. Further, the photocopy of certificate of the priority right that is notarized or certified by the court or the other bureau is forbidden to be submitted as a substitution. However, when two or more applications of the same applicant have the same priority right claim of foreign basis application, if original copy of certificate of the priority right is already being submitted for one of the applications, the photocopy of full certificate can be submitted as the substitution for the other applications, and the application, for which the original copy is already submitted, shall be noted.

If the applicant has submitted the first page photocopy of certificate of the priority right within 16 months from the earliest priority date (design application is within 10 months from the earliest priority date), TIPO will inform the applicant to submit original copy of the same document with the photocopy within a specified time period. The priority right claim will be deemed as non-claimed if the applicant fails to submit or the  document is incomplete after submission in the specified time period. On the other hand, from December 2, 2013, certificate of the priority right for invention or utility model application between TIPO and JPO can be applied through electronic exchange, the applicant only needs to state “receiving country, filing date, application number, patent category, access code” in the application form and does not need to submit certificate of the priority right.

A: The time period of submitting certificate of the priority right is within 16 months from the earliest priority date for invention or utility model application and within 10 months from the earliest priority date for design application.

When multiple priority rights are claimed, the time period of submitting all certificates of the priority rights is calculated from the earliest priority date. For example, the applicant claims three priority rights such as A, B, and C, and the priority dates are sequentially as date a, date b, and date c. If the applicant only submits certificate of the priority right B within 16 months from the earliest priority date (date a) (design application is within 10 months from the earliest priority date), the priority rights A and C will be deemed as non-claimed. The claim for re-calculating the time period of submitting certificate of the priority right C from the second earliest priority date (date b) is forbidden.

The time period of submitting certificate of the priority right is a statutory period, and thus extension of time period is not allowed. However, if the applicant has submitted the photocopy of certificate of the priority right within the statutory period, TIPO will inform the applicant to submit original copy of the same document with the photocopy within a specified time period.

A: No. All of the applicants of the patent application need to be the citizen of WTO member, or the citizen of the foreign country having admitted priority right with Taiwan, or the person having residence or business office in the region of WTO member or reciprocal nation, to claim priority right.

A: Yes. According to article 28 paragraph 3 of Taiwan Patent Act, the applicant having residence or business office in the region of WTO member or reciprocal nation can claim priority right in Taiwan, which is generally called quasi-national treatment.

    The applicant, who claims quasi-national treatment, needs to submit the official certificate document of having residence or business office in the region of WTO member or reciprocal nation.

A:

An invention application shall not be laid open under any of the following circumstances.

1.The application does not conform to formality requirement.

2.The application is withdrawn within fifteen months after its filing date (or priority date when  

   the priority right is claimed). Further, regarding the application claiming national priority based

   on Article 30 of Taiwan patent act, the prior application for national priority is deemed to be

   withdrawn after fifteen months from its filing date, and thus the prior application will not be

   laid open.

3.The application involves national defense secrets or any other secrets pertaining to national

   security.

4.The application is contrary to public order or morality.

Other than the aforementioned circumstances, all invention applications will be laid open, and

the applicant is not allowed to apply for non-laid open.

 

A:  Where a request for division of an application for registration was filed after the registration was accepted and before the registration was published, TIPO shall proceed the division of registration after the registration fee has been paid by the applicant and the registration was published.

A: The Chinese translation shall be completely translated on the basis of the foreign language application document. 

     The disclosure of the Chinese translation that is out of the disclosed scope of the foreign language application document shall not be granted in the patent.

A: The specification and the figures of the foreign language application document shall completely disclose the technical solution of the claimed invention. 

The applicant shall be noticed to correct the document in a certain period if either the page number of the specification or the figure number of the figures of the foreign language application document is found to be discontinuous under the formality examination, and the legal effect and the handling solution shall follow the rule applied when the specification or the figures of a Chinese application document is found to be missed.  

The same rule shall be applied when the missing part of the foreign language application document is found by the applicant.

A: Yes, an application for trademark registration with multiple classes and claiming plural priority rights shall indicate priority date and the country (or the member of the WTO) in which the first application was made for the name of goods/services in each class. 

A trademark application with single class and claiming plural priority rights shall identify the designated goods/services with respective priority date. 

The application date of each designated goods/services is the respective priority date thereof.

A: The languages of the foreign language application document are limited to Arabic, English, French, German, Japanese, Korean, Portuguese, Russian, or Spanish.

The foreign language application document of the invention patent application shall provide specification, at least one claim and necessary drawing(s). The foreign language application document of the utility model patent application shall provide specification, at least one claim and drawing(s). The foreign language application document of the design patent application shall provide drawing(s) and specify the design name.

The Applicant must submit Chinese translation in the specified time period to obtain the filing date on which the foreign language application document is submitted. Where the Chinese translation is not submitted within the specified time period, the application shall be dismissed. However, if the Chinese translation is submitted before the dismissal decision is served, the date on which the Chinese translation is submitted shall be regarded as the filing date.

A: The Applicant, who uses the foreign patent publication(s) or the priority document(s) as the foreign language application document, shall comply with Article 4 of “regulations governing submission of foreign language application documents” to obtain the filing date on which the foreign language application document is submitted.

For example, when the priority document of the US provisional application is used as the foreign language application document, it shall be noticed that if the claim(s), or drawing(s), etc., required for obtaining the filing date, is included in the document.

A: The purpose of the foreign language application document is verifying the technical disclosure scope for obtaining the filing date and is not verifying if the format is consistent with the rules in Taiwan. Further, the foreign language application document is not allowed to be modified after being submitted.

Therefore, when the foreign language application document is not written according to the title or order regulated by “enforcement rules of the patent act”, the Applicant only needs to provide the Chinese translation complied with the rules and specify that the content does not extend beyond the disclosed scope of the foreign language application document at the filing date.  

A: Before the invention application is laid open, if any changing matter follows, when the change is applied before “completing the examination prior to laid-open”, the data being changed will be laid open; when the change is applied after “completing the examination prior to laid-open”, the data at filing will be laid open.

(02) 2364-3566  ext.209

iplaw@hdgroup.com.tw

台北市106羅斯福路2段107號12F

回到頂端