Patents are granted for innovative products, materials and processes ("inventionsâ€ť). They primarily provide protection against unauthorised imitations, but can also be licensed to others. The patent is a territorial right and is only valid in the country in which it was granted.
A prerequisite for a patent to be granted is that it is directed to a technical invention which is new, inventive and can be put to use commercially.
Patents are valid for a maximum of 20 years from their date of filing. In most countries, renewal fees must be paid regularly to maintain the patent.
Plans, rules and methods for performing mental activities, for games or doing business, as well as programs for computers and reproductions of information are excluded from patent protection. At least in Europe patents cannot be granted for surgical or therapeutic methods of treatment of the human or animal body or for diagnostic methods.
Patent Protection in Taiwan
Unlike most countries, Taiwan is not a member of the WIPO â€“ the World Intellectual Property Organisation â€“ and is therefore not a member of any of the international registration systems, such as the Patent Cooperation Treaty (PCT) system for filing patent applications or the Madrid system for seeking trade mark protection. Taiwan does, however, have its own patent, trade mark and design registration system. In recent years, the number of patent applications has soared (31,604 from non-Taiwanese companies in 2016, up from 10,910 in 2010; local companies increased their filings from 35,056 to 46,486 in the same period).
Filing Patent Applications
Patent applications are filed at the local Taiwanese Patent Office within twelve months of filing the initial application in another country, such as Germany, the UK or the US. A translation into traditional Chinese has to be filed, but the deadline for this filing can be extended for up to six months. The same translation can also be used for filing patents later in Hong Kong. Although mainland China uses a different (modernized) character set than Taiwan, a translation made for the Taiwanese Patent Office can be converted readily into an application for a patent on the mainland.
Itâ€™s not possible to designate Taiwan under the international patent cooperation treaty which means that any decision on filing in the country needs to be made in the first twelve months after the original first filing. However, by delaying the filing of the translation a patent applicant will often be able to assess the prior art cited in the International Search Report before proceeding ahead with filing of the translation. Any translation can be used later for filing Chinese and Hong Kong patent applications based on the international patent application.
Accelerating Patent Grant
It is currently taking around 15-16 months from filing to grant of a patent in Taiwan and can be speeded up if the Applicant can take advantage of an agreement with another patent office to recognize each otherâ€™s work product (the so-called Patent Prosecution Highway). Unfortunately, the only European country currently participating in this programme is Spain. However, if the initial patent application is filed in the United States, then a European applicant can use the approval of a US patent to speed up the prosecution in Taiwan.
It is also possible to request accelerated examination in Taiwan based on an office action or a search report issued by the European Patent Office, the US Patent and Trademark Office or the Japanese patent office. This includes also international search reports. This accelerated examination can also speed up grant of the patent substantially. The applicant will be asked to submit any amendments to the Taiwanese patent application in order to take the results of the patent search into account. Since the same amendments will need to be made in other countries, this involves little extra work and should avoid duplicate work in the future, thus saving costs as well as speeding up the grant process.
It may not be as easy to file patents in Taiwan as it is in many other countries. It is particularly complicated by the need to make a decision within twelve months of the first filing, rather than initially filing an international patent application and waiting thirty months before making a final decision. A strategy of postponing the filing of the translation until the search report from another patent office and then requesting accelerated examination in Taiwan means that patent grants can be obtained reasonably quickly once a decision on filing is made.
Contact: Dr. Robert Harrison