Patents and Patentability in Taiwan

Patent protection in Taiwan has increased in importance as the economic relationship between the US, Europe, and Taiwan has grown. According to the United States Trade Representative, Taiwan is currently our 10th largest goods trading partner with $65.3 billion in total (two way) goods traded during 2016. Goods exports totaled $26.0 billion, while goods imports totaled $39.3 billion. As for Europe, Taiwan is the European Union’s (EU) seventh largest trading partner and EU exports to Taiwan totaled € 16.5 billion while EU imports from Taiwan totaled € 22.1 billion.

It is important to remember that Taiwan is not a member of the World Intellectual Property Organization (WIPO) and has not signed on to most WIPO-administered agreements, but Taiwan has bilateral intellectual property related agreements and memorandums of understanding with a number of countries, including the U.S. and EU. Even though Taiwan is not a contracting state to the European Patent Convention (EPC), or the Patent Cooperation Treaty (PCT), a foreign applicant can still claim priority to a first-filed EPC or PCT application in a later-filed Taiwanese application. Taiwan is not a PCT member, the 30-month timeframe for national phase entry is not applicable with regards to Taiwan. Instead, a Taiwanese national application must be filed within 12 months from the earliest filing date to appropriately claim priority. Taiwanese patent applications can be filed in a language other than Chinese. However, a Chinese translation printed in traditional Chinese characters must be submitted within a specified period. According to the Implementation Regulations Governing Foreign-language Patent Applications, the languages currently accepted are Arabic, English, French, German, Japanese, Korean, Portuguese, Russian and Spanish.

There are three types of patents in Taiwan: Invention, Utility Model, and Design. Invention patents are what most practitioners have come to recognize as traditional patents and are granted to the creation of new and useful products and technologies. As with other patents worldwide, an Invention patent provides 20 years of protection (subject to payment of annual maintenance fees) from the date of filing. As for patentable subject matter, animals, plants, and essential biological processes for the production of animals or plants, except for processes for producing microorganisms, are NOT patentable in Taiwan. Diagnostic, therapeutic and surgical methods for the treatment of humans or animals are also NOT Patentable in Taiwan. An article that is detrimental to public order, morality, or public health is also NOT patentable. In general, the application process takes between 24 to 36 months for prosecution of an Invention patent.

A Utility Model patent protects inventions, such as innovations relating to shape or structure, that are considered to have a lower degree of inventiveness than is required for Invention patents. Utility Model patents provide only 10 years of protection from the date of filing. Since Utility Model patents are not examined as rigorously as Invention patents, Utility Model patents are generally granted more quickly than Invention patents.

A Design Patent is an article created, wholly or in part, for visual appeal through the use of shape, pattern, color, or any combination thereof. This includes computer-generated icons and graphical user interfaces. Design patents last 12 years from the date of filing.

The opposition system in Taiwan was abolished in 2004, although third-party observations stating why the patent should not be grated can be presented during the examination procedure. Thus, the only way to a challenge a granted Taiwanese patent is through the invalidation procedure. The Intellectual Property Court (IP Court) deals exclusively with matters relating to IP rights. Judges on the IP Court have expertise in hearing IP cases with some also having a technical background. Technical examination officers act as technical assistants to the judges. The examination officers are mostly senior examiners of the Taiwan Intellectual Property Office (TIPO) with technical backgrounds and experience in patent examination. And similarly to the U.S. system, infringement and validity issues are adjudicated simultaneously.

This article appeared in the April 2018 issue of Global Patent Prosecution Newsletter.