Lawyer Monthly - December 2024

WWW.LAWYER-MONTHLY.COM 43 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 foreignlanguage 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 Swisstype 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 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. 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. Productby-process claims are narrowly interpreted in Taiwan and are only allowable when the invention cannot be defined by structure.

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