Taiwan Patent Act

Amended on January 22, 2014; entered into force on March 24, 2014

Chapter 1 General Provisions

Article 1 Purpose
This Act is enacted for the encouragement, protection and utilization of creations of inventions, utility models and designs in order to promote the development of industry.

Article 2 Categories of patents
The term "patent" referred to in this Act is classified into the following three categories:
1. invention patents;
2. utility model patents; and
3. design patents.

Article 3 Competent authority
The "competent authority" as referred to in this Act is the Ministry of Economic Affairs (hereinafter as the MOEA).
Patent affairs shall be administrated by a specific agency appointed by the MOEA.

Article 4 Acceptance of foreign application
A patent application filed by a foreign applicant shall not be accepted if the home country of such foreign applicant is not a signatory to an international treaty for protection of patent right to which the Republic of China (ROC) is a signatory, or if the home country does not conclude with the ROC a treaty or an agreement for reciprocal protection of patent rights, or if no patent protection agreement is concluded by and between organizations or institutions of the ROC and said foreign country which has been approved by the competent authority, or if the laws of said foreign country do not accept patent applications filed by nationals of the ROC.

Article 5 Right to apply for patent
The term "right to apply for a patent" shall mean the right to file a patent application in accordance with the provisions of this Act.
Subject to provisions in this Act otherwise provided for or the covenants otherwise set forth in an agreement, the term "the owner of the right to apply for a patent" shall mean an inventor, utility model creator, designer or his/her assignee or successor.

Article 6 Transference and pledge of patent
The right to apply for a patent or the patent right is both assignable and inheritable.
The right to apply for a patent shall not be taken as the subject of a pledge.
In the case of taking a patent right as the subject of a pledge, the pledgee shall not be allowed to exploit the patent right, unless it is otherwise provided for in an agreement.

Article 7 Invention made in the performance of duties
Where an invention or a utility model or a design is made by an employee in the performance of his/her job duties, the right to apply for a patent and the patent right thereof shall be vested in his/her employer and the employer shall pay the employee reasonable remuneration; where there is an agreement providing otherwise, such agreement shall prevail.
The phrase "an invention, or a utility model or a design made by an employee under the performance of his/her job duties" as set forth in the preceding paragraph shall mean the invention, utility model, or design completed by an employee in performing his/her job duties during the period of his/her employment.
Where a fund provider engages another party to conduct research and development, the ownership of the right to apply for a patent and the patent right in connection with the outcome of such research and development shall be vested in the party as mutually agreed upon in an agreement between both parties, or such right shall be vested in the inventor, utility model creator or designer in the absence of such covenant in the agreement. However, the fund provider shall be entitled to exploit such invention, utility model or design.
Where the ownership of the right to apply for a patent and the patent right are vested in the employer or the fund provider under Paragraph 1 or the preceding paragraph, the inventor, utility model creator or the designer concerned shall be entitled to a right to have his/her name shown as such.

Article 8 Invention irrelevant to the performance of duties
Where an invention, utility model or design made by an employee has no connection to the performance of his/her job duties, the right to apply for a patent and the patent right for such invention, utility model or design shall be vested in the employee. However, if such invention, utility model or design is made through utilization of the employer's resources or experience, the employer may, after paying the employee a reasonable remuneration, exploit the invention, utility model or design concerned in its enterprise.
Upon completion of an invention, utility model or design by an employee, which has no connection to the performance of his/her job duties, the employee shall give his/her employer notice in writing of such event and shall inform his/her employer of the process of the innovation, if necessary.
If the employer fails to raise any objection to the employee within six months after receiving the employee's written notice under the preceding paragraph, the employer shall not claim that such invention, utility model or design was made by the said employee in the performance of his/her job duties.

Article 9 Protection of employees’ legitimate rights
An agreement concluded between an employer and an employee as stated in the preceding Article, based on which the employee is precluded from enjoying his/her legitimate rights and interests in respect of his/her invention, utility model, or design shall become void.

Article 10 Agreement on ownership
Where an agreement has been reached by an employer and its employee regarding a dispute over attribution of rights as set forth in Articles 7 and 8 of this Act, the employer or employee concerned may file an application along with relevant evidentiary documents with the Specific Patent Agency for change of ownership of the right involved. The Specific Patent Agency may, as it deems necessary, notify the parties involved to submit documents relevant to any mediation, arbitration or court judgment rendered in accordance with other laws and regulations.

Article 11 Patent agency
An applicant, holder or other interested person may designate an agent to file patent applications or handle patent-related matters on his/her behalf.
An applicant, holder or other interested person who has no domicile or business establishment in the territory of the ROC shall designate an agent to file patent applications or handle patent-related matters on his/her behalf.
Eligible agents shall be limited to patent attorneys, unless otherwise provided for by laws and regulations.
The qualification and administration of patent attorneys shall be prescribed by separate laws.

Article 12 Joint application
Where a right to apply for a patent is jointly owned by two or more persons, the patent application related thereto shall be filed by all the joint applicants.
Where two or more persons engage in any patent-related procedure other than filing a patent application, each of them may complete such procedure independently, except for making a withdrawal or an abandonment of a patent application, filing a divisional application or a converted application, or taking other actions for which this Act requires execution by all the joint applicants. However, if a representative is designated by a mutual covenant of all the joint applicants, such covenant shall prevail.
In the case of an event requiring execution of all the joint applicants as set forth in the preceding two paragraphs, one of the joint applicants shall be appointed as the recipient of service of documents. In the absence of such a representative, the Specific Patent Agency shall name the first-listed joint applicant as the recipient of service of documents and shall advise other joint applicant(s) of such service matters.

Article 13 Co-ownership of the right to apply for patent
Where the right to apply for a patent is jointly owned, the right to apply for the patent shall not be assigned or abandoned without the consent of all joint applicants.
Where the right to apply for the patent is jointly owned by two or more persons, none of the joint applicants shall assign his/her own share therein to a third party without the consent of other joint applicant(s).
Where one of the owners of the right to apply for the patent abandons his/her own share, this share shall be vested in other joint owner(s).

Article 14 Recordation to have Locus standi against a third party:
transference of right to apply for patent
In the case of an inheritance or assignment of the right to apply for a patent, the successor or the assignee shall have no locus standi against any third party unless the patent application has been filed in the name of the successor or the assignee at the time of filing, or a request has been filed thereafter with the Specific Patent Agency for recordation of change in applicant.
The request referred to in the preceding paragraph, whether for assignment or inheritance, shall be accompanied by evidentiary documents.

Article 15 Duty of confidentiality of staff members and patent examiners
While serving with the Specific Patent Agency, a staff member or a patent examiner shall not apply for a patent or receive any rights or interests in connection with such patent directly or indirectly, except for inheritance.
Staff members or patent examiners of the Specific Patent Agency are obligated to keep confidential any invention, utility model, or design, or the trade secrets of an applicant, which have become known to or been possessed by them in the course of performing their duties; whoever violates such obligation shall bear relevant legal responsibility.
The qualification of patent examiners shall be prescribed separately by laws.

Article 16 Avoiding conflict of interests by patent examinersv
Under any of the following circumstances, a patent examiner shall exclude himself/herself from performing the duties concerned:
1. where, for a concerned patent case, the patent examiner or his/her spouse is the patent applicant, patentee, invalidation petitioner, patent agent, or a partner of the said patent agent or a person having employment relationship with the patent agent;
2. where, for a concerned patent case, the patent examiner is presently related to the patent applicant, patentee, invalidation petitioner or the patent agent by consanguinity within the fourth degree or by affinity within the third degree;
3. where, for a concerned patent case, the patent examiner or his/her spouse and the patent applicant, patentee or invalidation petitioner are common obligee(s), obligor(s), or debt-paying obligor(s);
4. where the patent examiner is or was the legal representative, the family head or a household member of the patent applicant, patentee or invalidation petitioner;
5. where the patent examiner is or was a litigation agent of the patent applicant, patentee or invalidation petitioner, or is or was the assisting party thereof; or
6. where, for a concerned patent case, the examiner is or was a witness, an expert witness, an opposition petitioner or an invalidation petitioner. Where an examiner should have but did not exclude himself/herself from performing his/her functions, the Specific Patent Agency may, upon request or on its own authority, revoke the measure(s) already taken and adopt an alternative measure instead.

Article 17 Delay and reinstatement
Unless otherwise provided in this Act, where a person filing a patent application or taking other proceeding in connection with patent matters has failed to comply within a statutory or specified time limit, the application filed or the proceeding initiated by him/her shall be dismissed. However, if the delay in not acting within a specified time limit has been corrected before the dismissal is rendered by the Specific Patent Agency, such application or proceeding shall still be accepted.
If the delay is caused by natural calamity or other cause(s) not attributable to the applicant, the applicant may, within thirty days after cessation of such cause, request with the Specific Patent Agency stating the cause(s) for delay and requesting for reinstatement. An application for reinstatement shall not be accepted if delay has exceeded one year from the expiration of a statutory time limit.
While applying for reinstatement, the applicant shall concurrently complete the application that should have been fulfilled by him/her within the concerned time limit. The preceding two paragraphs shall not apply to a delay beyond the time limits as set forth in each of Paragraph 4 of Article 29, Paragraph 4 of Article 52, Paragraph 2 of Article 70, Paragraph 4 of Article 29 applicable mutatis mutandis under Article 120, Paragraph 4 of Article 52 applicable mutatis mutandis under Article 120; Paragraph 2 of Article 70 applicable mutatis mutandis under Article 120; Paragraph 4 of Article 29 applicable mutatis mutandis under Paragraph 1 of Article 142; Paragraph 4 of Article 52 applicable mutatis mutandis under Paragraph 1 of Article 142 and Paragraph 2 of Article 70 applicable mutatis mutandis under Paragraph 1 of Article 142.

Article 18 Service by publication
Where an examination decision or any other document cannot be served, such decision or document shall be published in the Patent Gazette and shall be deemed having been duly served thirty days after the date of publication.

Article 19 E-filing
Application for patent and other relevant proceedings may be effected by means of electronic communications, of which the implementation shall be prescribed by the competent authority.

Article 20 Calculation of time periods
The duration of relevant time periods as specified in this Act shall not include the beginning date thereof.
The duration of the patent right as specified respectively in Paragraph 3 of Article 52, Article 114 and Article 135 of this Act shall start to run from the filing date of the patent application concerned.