Taiwan’s Patent System: Key Differences and Challenges for Foreign Companies.
Taiwan’s patent system has unique characteristics that set it apart from other major jurisdictions, such as the U.S. and Europe. From its approach to patent types and examination processes to its stance on novelty, inventiveness, and grace periods, Taiwan offers a distinctive framework for protecting intellectual property. This interview with Kevin C.W. Feng, explores the key aspects of Taiwan’s patent system and highlights the challenges foreign companies may face when seeking patent protection in the country.
Kevin C.W. Feng Tsai Lee & Chen Patent Attorneys & Attorneys at Law
How does Taiwan's patent system differ from that of other countries, particularly the U.S. and Europe?
Taiwan’s patent system offers three types of patents: invention patents, utility models, and design patents, with terms of 20, 10, and 15 years, respectively, all calculated from the filing date. Unlike the U.S., Taiwan does not issue plant patents but instead provides plant variety rights under different requirements. For invention patents, applicants must request substantive examination within three years of the filing date. The average pendency for a first office action is 8 to 9 months, with case closure in 14 to 15 months. Utility models undergo only a formality examination, not a substantive one, and design patents receive automatic substantive examinations from the time of filing.
At the time of filing, Taiwan’s Intellectual Property Office (TIPO) accepts patent specifications in any of the following languages: Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian, and Spanish. However, applicants must later submit a Chinese translation within a designated period. TIPO examines only the Chinese text, with the foreign-language version serving as a reference for corrections if needed.
Unlike the U.S., diagnostic, therapeutic, and surgical methods are not patentable subject matter in Taiwan. Instead, the applicant can use a Swiss-type claim as an alternative, which is interpreted as a method for preparing medicaments. Additionally, Taiwan adopts absolute novelty for substances. Hence, when the claimed subject matter is a substance, different uses are not limitations to the substance.
Product-by-process claims are narrowly interpreted in Taiwan and are only allowable when the invention cannot be defined by structure. Although product-by-process claims are not limited by their process, the courts’ interpretation often restricts protection to embodiments specifically illustrated in the patent specification.
Taiwan’s inventiveness benchmark is primarily modeled after the Graham test under U.S. law, consisting of five steps: (1) define the invention’s claimed scope; (2) identify the content of relevant prior art; (3) ascertain the technical knowledge level of the person having ordinary skill in the art; (4) determine the difference between the invention and the relevant prior art; and (5) decide if the claimed invention would be easily accomplished by a skilled person using existing prior art and common knowledge at the filing date. Departing from the EPO, Taiwan does not require identifying the closest prior art.
Secondary considerations are recognizable factors to affirm inventiveness, such as unexpected results, long-felt needs, technical bias, and commercial success. Yet, in a recent case, the court emphasized that secondary considerations recede if the claims are found not inventive.
Taiwan’s grace period for novelty and inventiveness is lenient. For any intended or unintended disclosures, either by the applicant or a third party, such disclosure will not become a novelty or inventiveness bar if an application for an invention or utility model patent is filed within twelve months. For design patents, the grace period is six months. To enjoy the grace period benefit, similar to the U.S., the applicant is not required to declare the fact of disclosure at the time of filing but only needs to present evidence to defend against it when the examiner later cites said disclosure. Notably, the grace period cannot be accumulated onto the Paris Convention priority period. For instance, when an invention is first disclosed and then filed in a foreign country, if the invention lapses the grace period, the foreign disclosure bars the invention even though priority is claimed.
Notably, a secret prior art reference that is filed first but published later undermines novelty but not inventiveness, which is aligned with the EPO but not the USPTO.
For software-related inventions, Taiwan’s Patent Examination Guidelines recommend that specifications include details on tools that achieve the technical function. These may consist of algorithms, pseudocode, and relevant software or hardware architectures, such as programming languages and function libraries. To satisfy the written support requirement, the Guidelines suggest that disclosures should be complete enough for a person skilled in the art to understand the invention and believe it can be practically implemented.
Unlike the EPO, Taiwan does not have a post-grant opposition system. The only route to challenge a granted patent is through an invalidation proceeding via TIPO, where any person may initiate a challenge, allowing for anonymous “strawman” actions. If dissatisfied with TIPO’s decision, challengers may file an administrative appeal followed by two levels of litigation.
What are the key challenges foreign companies face when applying for patents in Taiwan?
PCT and Convention Priority
Since Taiwan is not a PCT member, applicants must rely on Paris Convention priority to file in Taiwan. PCT applications cannot enter Taiwan’s national phase. An applicant from a WTO member country or a resident who files first in another country can claim priority within 12 months for inventions and six months for designs. If priority expires, applicants can still file in Taiwan, so long as there is no publication for the same matters that would serve as an immediate novelty or inventiveness bar.
Acceleration and Delay
Taiwan has bilateral Patent Prosecution Highway (PPH) agreements with the U.S., Japan, Spain, Korea, Poland, and Canada. An allowed foreign application from one of these countries enables applicants to accelerate a Taiwanese counterpart application of similar or narrower claimed scope. Where the PPH is unavailable, Taiwan’s own Accelerated Examination Program (AEP) offers another option. AEP applies if (1) a foreign counterpart has been allowed by a foreign patent authority, (2) an office action has been issued by the EPO, JPO, or USPTO, (3) the invention is essential to commercial use, or (4) the invention involves green technology.
For designs, a current acceleration pilot program is available if (1) a third party is commercially using the design, (2) the design is owned by a start-up, or (3) the design won an award, such as the iF Product Design Award, Red Dot Design Award, Good Design Award, Golden Pin Design Award, or International Design Excellence Award.
A delay examination system is also available for applicants wishing to slow the patent grant process. Applicants may postpone invention patent examinations by up to three years and design patent examination by up to one year if requested at filing.
Technical Evaluation Report for Utility Models
To enforce a utility model, the right holder must present a technical evaluation report (TER). A TER is an analytical assessment to ensure the validity of a utility model, which proceeds to grant before substantive examination. In a recent case, the court emphasized that a TER cannot be replaced by an infringement report, since the latter is based on the assumption of patent validity. Therefore, the two are conceptually different and not interchangeable. According to the Patent Act, a warning notice must be served to a counterparty accompanied by a TER, or the warning risks violating the Fair Trade Act.
CONTACT:
Kevin C.W. Feng
Tsai Lee & Chen Patent Attorneys & Attorneys at Law
11th floor, 148 Songjiang Road, Taipei 104, Taiwan
Email :info@tsailee.com.tw
Tel :886-2-2571-0150
Fax : 886-2-2562-9103
www.tsailee.com.tw
