ALIPO IP ATTORNEYS

Frequently Asked Questions: Patents in Taiwan

Q1. After the patent has been approved but before the patent certificate is issued, may the applicant still amend the specification of the patent application? 

A: An amendment must be filed before the approval decision (disposition) is rendered. Once the approval decision has been made, no further amendments may be submitted until the applicant has obtained the patent certificate, after which only pot-grant amendments may be requested.  For invention and design patents, the patentee may request post-grant amendments to the description, claim(s) or drawing(s) after the publication of the grant. For utility model, post-grant amendments may only be filed in the course of requesting a technical evaluation report for utility model or during litigation proceedings. 

Q2. When may an applicant amend the description, claim(s) and drawing(s) after filing the patent application? 

A: The timing for filing amendments varies by patent type, as explained below:
1. Invention
The applicant is able to file amendment at any time before TIPO issues the first office action. After issuance of an office action, amendments are only allowed within a specified response period. If a final office action is rendered, the applicant may still amend when filing a re-examination request, up until TIPO issues a further office action for the re-examination. Once the office action for the re-examination is issued, further amendments are only allowed within a specified response period (Article 43 (3) of the Patent Act).

2. Design
The same amendment periods as invention. (Article 142(1) of the Patent Act shall apply mutatis mutandis to Article 43(3) of the Patent Act. 

3. Utility Model
The applicant can file amendment at any time before a notice of amendment is rendered by the TIPO. After a notice of amendment has been issued, the applicant can only file amendment within a specified time period. (Article 120 of the Patent Act shall apply mutatis mutandis to Article 43(3) of the Patent Act).

Q3. May patent annuities be paid in advance for multiple years at one time? If the patentee later abandons the patent right, may prepaid annuities be refunded ? 

A: Patent annuity fee can be paid annually or for several years at once, up to the full term of the patent. If the patentee later chooses not to maintain the patent, the prepaid annuity fee may be refunded upon submission of a refund application form together with the original payment receipt.

Q4. After receiving an office action for an invention patent application, may I request conversion to a utility model application? Can it be re-converted into an invention patent?  

A: An invention patent application can be converted into utility model application at any time before an approval decision is rendered and served. If the invention patent application is determined to be unpatentable, the applicant may still request conversion into a utility model within 2 months of receiving the refusal decision. It is also possible for invention patent to be converted to utility model after receiving an office action on the invention application. However, once an application has been converted, and after the first office action has been issued, the legal principle of prohibition repeated examination applies. Accordingly, the converted application cannot be reconverted back into an invention patent.