Q&A

Yes. Apart from the non-statutory subject matter prescribed under Articles 22 and 23 of the Patent Act, the ROC does not impose limitations on filing computer software related invention patent applications. An invention patent can be filed if the application is a creation of technical concepts by utilizing the rules of nature, in compliance with Article 22 of the Patent Act (having industrial applicability, novelty, and progressive characteristics), and does not violate provisions prescribed under Article 24 of the Patent Act. The approval or rejection of the application should depend on an examination based on the technical disclosure of the specification.

Concepts are not subject to patent protection. A patent has to disclose concrete and applicable techniques that can be applied by anyone in the relevant field.

Methods of product inspection can be protected by patents as long as they are creations of technical concepts by utilizing the rules of nature. However, if the methods are created using man-made rules or methods that are not related to the utilization of the rules of nature, they cannot be patented.

According to Paragraph 1, Article 109 of the Patent Act, colors are creations that are protected by design patents. If colors are claimed, the color scheme showing the applied colors of the article shall be submitted with the statement of the industrial color guide codes for all colors used, or with color cards.

The term “patterns” in the Patent Act refers to lines or line-patterns used to decorate the surface of an article. In principle, words cannot be deemed as patterns, but can be important elements of a pattern.

 In principle, an article embodying a design patent has to be an actual object that can be subjected to transactions by consumers in general. The article has to be a movable property with a fixed shape. A building is an immovable property, thus it cannot be deemed an article eligible for a design patent. Likewise, the exterior of a building or landscape design cannot be categorized as an article eligible for a design patent.

Patents are territorial. The product will only be protected if it has obtained a patent in the local country.

If the applicant submits the application with TIPO or the collection counters in Hsinchu, Taichung, Kaohsiung service centers in person, the application number should be obtained at the time of submission. If the application is submitted by registered mail, the delivery time will be 2-3 working days, and TIPO will issue an application number upon receipt of the application. For the convenience of checking the patent application examination status, the service counters at TIPO and the Hsinchu, Taichung, Kaohsiung service centers provide telephone inquiry services.

When the ROC branch of an approved foreign company files an application, the name of the foreign company shall be the applicant, and the person in charge of the ROC branch shall act as the representative in order to file the application. If the address of the ROC branch is used as the address of the applicant, it is not necessary to designate a patent attorney.

Prior to filing a patent, if the invention or utility model has been published or put to public use, or has become known to the public, it constitutes a prior art and loses its novelty . However, a grace period may be claimed, if, 1) the publication is a result of research or experiment; 2) the publication is a result of being exhibited at an exhibition sponsored or approved by the government; 3) the invention has been disclosed in an occasion not intended by the patent applicant. In the case of the preceding causes, the applicant shall file the application within six months from the date of actual occurrence of the foregoing causes, and indicate the relevant occurrences, then publications of the techniques resulted from the relevant occurrences are considered exceptions not belonging as a part of prior art and thus do not constitute novelty bar. However, indication of the cause set forth in the above Item 3 is not limited to the time of filing. This six-month period is referred to as the “grace period.” Similar regulations also apply to designs, but designs are designs of appearances, and do not involve research and experiment, such that research and experiment cannot serve as a reason for the grace period.

“An exhibition sponsored or approved by the government” prescribed under the Patent Act shall be an exhibition listed, co-hosted, or commissioned by the government. Article 22 of the Patent Act shall not apply, if the exhibition is non-governmental, or not officially authorized by the government.

During the examination, TIPO may, according to the application or ex officio, notify the patent applicant to perform experiments, and supplement models or samples within a time limit. In other words, since the substantive examination of a patent is based on the paperwork, if the models or samples are prepared, the applicant only has to make an indication in the request form, and does not need to submit them at the time of filing. If necessary, the examiner will notify the applicant to make a supplement.

According to Article 40 of the Patent Act, where a person has received a written notification of the disclosures of an invention patent application from the applicant thereof after the laying-opening of such application, and continues to put the invention to practice for commercial purposes in the interim after such notification and prior to the publication, the applicant of the invention patent application may, after the publication of his/her invention patent application, make a claim against said person for an appropriate pecuniary compensation. Compensation may also be claimed if the person is fully aware of the fact that the invention patent application has already been laid-open, but continues to put the invention to practice for commercial purposes prior to the publication. However, the approval and amount of such compensation shall be judged by the Court. Please be aware that the right to claim for pecuniary compensation set forth shall become extinguished if not exercised within two years from the date of publication of said patent application.

Each invention patent application shall be filed separately. This is mainly taking into concern the convenience of the classification, searching, and administration of patent applications for the applicant, the public and TIPO. The phrase, “Unity of invention”, means that patent applications shall be filed separately for two or more inventions. In principle, there shall be one application for each invention, except when two or more inventions are technically related and belong to one invention concept in the broad sense, and such exception may be filed as one application. As for the meaning of an “invention concept in a broad sense,” detailed explanations are provided in the Examination Guidelines promulgated by TIPO.

The first -to -file principle applies that when two or more applications are filed for the same invention, regardless of whether they are filed on the same day, by the same person, or whether substantive examination has been requested, only the application filed first may be granted an invention patent. The same patent shall not be granted more than once.

Pursuant to the provisions in the Patent Act, for an invention or creation, only the application filed first may be granted an invention patent. If the scope of the claims are proved to be the same for the two applications, even if the later application is mistakenly granted first, it shall be revoked upon an invalidation action filed by a third person or ex officio.

Formality examination is adopted for a utility model patent application. Since patentability is not substantively examined, the new system may result in unstableness and uncertainty with respect to the disclosures of the utility model patent. If a patentee inappropriately exercises such uncertain right, the patent rights may possibly be abused, which may hinder a third person’s research and development. Therefore, a Technical Evaluation Report is prescribed under the Patent Act, which allows anyone to request TIPO for a Technical Evaluation Report regarding a utility model, in order to clarify if said utility model complies with the patentability of utility models. However, the aforesaid Technical Evaluation Report rendered to a utility model does not have a legal binding effect, and it is not an administrative order, either. It is merely a reference for exercising the rights to utility model patent or for technical reference. Anyone having a cause as to that a utility model patent should not be approved, may according to Article 107 of the Patent Act institute an invalidation action in order to revoke such utility model patent.

A design focuses on the creation of the appearance of an article. Therefore, it does not have the concept of inventive step as for an invention or utility model, but a design shall still comply with the requirement of creativeness. However, even if a design has novelty, it shall still not be granted a patent if it can be conceived easily by an ordinarily skilled person in the relevant art based on existing prior art before the application for patent is filed.

No. The protection of patent begins on the date of publication of the granted patent.

With regards to a patent, if the ownership of the patent is involved, only an interested party may institute an invalidation action. Otherwise, anyone who believes a patent violating the provisions of the Patent Act, may institute an invalidation action, to request for revocation of said patent.

Pursuant to the provisions of Article 56 of the Patent Act, unless otherwise provided for in the Patent Act, the patentee of a patented article shall have the exclusive rights to preclude other persons from manufacturing, making an offer for sale, selling, using, or importing for above purposes the patented article without his/her prior consent.

Unless otherwise provided for in the Patent Act, the patentee of a patented process shall have the exclusive right to preclude others from using such process and using, selling or importing for above purposes the articles made through direct use of the said process without his/her prior consent.

The scope of an invention patent shall be determined based on the claim(s) set forth in the specification of the invention. The descriptions and drawings of the invention may be used as reference when interpreting the scope of the claims in the patent application.

A patent is still effective during an invalidation proceeding, and there will be no loss of rights due to the existence of the invalidation proceeding.

"A trademark" is also known as a brand, and is used for identifying the specific source of goods or services provided. In order to avoid confusion, to protect the rights of a trademark right holder and the interests of consumers, to prevent any unfair competition and to facilitate the development of an industrial or commercial business, the Trademark Act clearly prescribes circumstances under which a party may not file a trademark application and prohibits any party from plagiarizing another party's registered trademark.（§1, Trademark Act）

The basic principles of the Trademark Act of the Republic of China are explained below:
Registration protection principle and exceptions: In respect to the acquisition of trademark rights, the Trademark Act of the Republic of China adopts the registration protection system. That is, a company's trademark that is used to identify the source of the goods or services cannot eliminate another party's right to use the same until an application for registration of the trademark has been filed pursuant to the law. In respect to the protection of a well-known trademark, the Trademark Act precludes any improper use of a well-known trademark by another party, resulting in diluting the distinctiveness or reputation of the well-known trademark. However, registration is not the requirement for acquisition of the protection. （§2, §29, §30, §62 Trademark Act）

The "first to file" principle means that the sequence of the acquisition of rights depends on the sequence of the examination of trademark applications. Where applications for registration of an identical trademark or similar trademark(s) designated for the same or similar goods have been filed, the application that is first filed shall be granted registration. （§18, §231(13), Trademark Act）

The "territory-based" principle means that the acquisition and cancellation of trademark rights depends on the applicable laws of the respective countries. The scope of trademark rights to be claimed is confined to the territory of the country where the trademark is registered, except in the case where the international registration system recognized by an international treaty is applicable. That is to say, no claim of protection in other countries may be made in respect of a trademark that is registered and protected in the Republic of China.

l The examination principle means that a trademark can be registered in the Republic of China only after it has been examined to be in order. The application shall be disapproved shall any violation is observed. （§15; §24; §25, Trademark Act）
The use and protection principle means that where a trademark is intended to be used, an application for registration of the trademark may be filed beforehand. However, to prevent the occurrence of where a registrant monopolizes a trademark right but has not used the trademark for an extended period of time, which will jeopardize another party's application and usage right, the Agreement on Trade-Related Intellectual Property Rights (TRIPS) and the Trademark Acts of other countries have provisions prescribing that the registration of such a trademark shall be revoked if it has not been continuously used for three years or five years. The R.O.C. Trademark Act sets the period as three years, i.e., if a trademark has not been put into use for three years after registration or has been continuously suspended from use for three years, the registration of the trademark shall be revoked.
The principle of an opportunity to be heard: As trademark protection aims to avoid causing confusion, trademark rights may eliminate the scope of another party's registration and use, including similar trademarks and similar goods. The principle of registering trademark after examination reduces the possibility of registered trademarks to be challenged, and further to lighten litigious burdens on trademark right holders or interested parties. However, trademark legislation of other countries provides an interested party to a registered trademark with an opportunity to file for opposition or invalidation to a reasonable extent.

A "trademark" is a sign that is used to distinguish one's goods or services from those provided by others. As the economy, culture, and the market diversify, the types of trademarks may now include a packaging design, three-dimensional object, sound, or even a scent. In the Republic of China, a trademark refers to a sign consisting of any word, figure, symbol, color, sound, three-dimensional shape or any combination thereof. In addition, the minimum requirement of the trademark laws of every country is that a trademark must be recognizable to the general consumers as a trademark and is indicative of the source of the goods. Most generic names or direct or obvious descriptions of goods do not possess the characteristics of a trademark. （§5, Trademark Act）

Legally, the registration of a trademark accords the right to eliminate other party's use of the same trademark or the right to license the same trademark to someone else. In addition to traditional trademarks labeled on the goods or their packaging and containers, trademarks may also include some special forms such as three-dimensional, color and sound trademarks.

Three-dimensional trademark:
A three-dimensional trademark is a sign consisting of a three-dimensional shape formed in three-dimensional space, whereby consumers are capable of distinguishing the sources of different goods or services. For instance, if the shape of goods or the shape of their packaging or containers can identify the source of the goods, it can be registered as a three-dimensional trademark.

Color trademark:
A color trademark is a single color that is applied, in whole or in part, to the surface of goods or the container or to the place of business where services are provided. If a color itself can adequately identifies the source of goods or services, not in combination with a word, figure or symbol, it may be registrable as a color trademark.

Sound trademark:
A sound trademark is a sound that can adequately allow relevant consumers to identify the source of certain goods or services. For instance, a short advertising jingle, rhythm, sound of human speaking, peal, bell ringing, or the call of an animal can be registered as a sound trademark.

As the term suggests, a "collective trademark" is a brand commonly used by the members of a group. It could be a farmers' association, a fishermen's association, or other associations that are eligible for filing an application for registration of a collective trademark. All goods or services produced/manufactured or provided by the association members may label the collective trademark to distinguish those goods or services from goods or services produced/manufactured or provided by others. A collective trademark is intrinsically still a trademark. However, the major difference between a collective trademark and a trademark is that a collective trademark is used by the members of a group in connection with goods or services, while a trademark is used by the registrant for identifying his/her own goods or services. （§76, Trademark Act）

A certification trademark is a sign used to certify the characteristics, quality, precision, origin or other matters of another person's goods or services, e.g., the Taiwan fine product sign, UL electrical appliances safety sign, ST toy safety sign, and 100% wool sign, which are familiar to the average Taiwanese consumers. An applicant of a certification mark must be a juristic person, group or government agency that is capable of certifying an entity's goods or services. The use of a certification mark shall mean that the right holder of a certification mark, in order to certify the characteristics, quality, precision, origin or other matters of another person's goods or services, agrees to the person for displaying the certification mark on articles or documents in connection with the goods or services. （§72；§73, Trademark Act）

A collective membership mark identifies the organization or membership of a business association, social organization, or any other group that exists as a juristic person; that is, a collective membership mark is a general membership mark. The Lions Club, the Rotary Club, and a political party are all eligible for filing an application to register a collective membership mark for identifying their organizations or memberships. A collective membership mark has no direct relationship with business activities related to goods or services, as it simply identifies the organization of the group itself or the membership of its members and will be displayed on relevant articles or documents, while a collective trademark identifies the goods or services provided by the members of the group using the trademark. They are different intrinsically. （§74；§75, Trademark Act）

In order for a trademark to clearly identify the source of the goods, the design of a trademark should take into account the following matters:
Distinctiveness
If a trademark has distinctive features, goods bearing the trademark will stand out among other goods of the same kind and thus leave a deep impression on consumers. A distinctive trademark is easily understood, read and memorized. For instance, "穩潔" (Windex), "一匙靈" (one spoon effective) and "好自在" (Carefree).
Symbolism
If a trademark itself reflects the mission statement of a company and the features, functions and nature of the products, by looking at the trademark, consumers can understand the mission statement of the company and the features of the products. For example, the use of "美好挺" (good, fine, stiff) for clothing and the use of "克蟑" (cockroach preventer) for insecticides clearly show the features and functions of the goods. "和成HCG" for bathroom equipment was initially designed in rigid and mechanical block typeface and later changed to an elegant, soft and modern typeface, which incorporates the mission statement of the company, that is, creating a clean, excellent and comfortable life.
Originality
A trademark is not derived from existing words/phrases or things but from original thoughts. For example, "IBM" for computer goods, "SONY" for audio equipment," "KLIM" for milk powder, and "捷安特" (Giant) for bicycles are all original words and have strong distinctiveness. The use of them by another party can hardly be a coincidence but should be considered plagiarism. Thus, these words are granted more protection under the Trademark Act. As to common words, because they are not original, another party's use of them for dissimilar goods can hardly be considered malicious. When an enterprise using a trademark that contains common words is developing an affiliation and is diversifying its operations, it may find that its trademark has been registered by another party.
Strive for uniformity with the company name
A trademark not only identifies the source of goods but is also a symbol of business reputation. Thus, if a trademark corresponds to the name of a company, it will be helpful in popularizing the company, and in deepening the consumers' impression of the company/trademark. As trademark registration and the registration of a company's name are governed by the Trademark Act and the Company Act, respectively. The public should first search for relevant registration information by accessing the websites of the competent authorities. For trademark registration information, please access TIPO's websiteQTrademarkQTrademark Information Search (http://www.tipo.gov/tw/trademark/search_trademark.asp). For registration information about company's names, please access the website of the Ministry of Economic AffairsQCompany registration information and application system (http://www.moea.gov/tw/-doc/ce/cesc1004.html). Making the appropriate registration will eliminate the situation where a trademark has been registered as another's company name or where a company's name has been registered as another's trademark that could result in confusion to consumers and causing trademark disputes.

A trademark is granted protection only after it has been registered. The owner of an unregistered trademark cannot prohibit another party from plagiarizing. Sometimes, the use of an unregistered trademark may infringe upon another party's trademark rights. In order to acquire registration, the design of a trademark should observe the following points:

Do not use the descriptive wording or device of goods as a trademark.
The Trademark Act prohibits a trademark registration application to contain the name, shape, quality, function or other descriptions of goods themselves, since the description of goods can be freely used by anyone in the industry, if one single party monopolizes its, it will violates the principle of fair competition. Hence, the design of a trademark should be devoid of any description that is simply descriptive of the goods. For example, "殺蟑" (cockroach killer) for insecticides and "潔淨" (clean) for laundry detergents are deemed descriptions of goods. Conversely, the use of "克蟑" (cockroach preventer) and "一匙靈" (one spoon effective) for the goods are not routinely or actually used by the industries, nor do the terms directly describe the goods.

Do not use a trademark that is identical or similar to another person's registered trademark designated for the same or similar goods.

To avoid having identical or similar design to someone else's registered trademark, a search for similar trademarks should be done before proceeding to design a trademark. TIPO has a trademark search system on the Internet. The public may search for relevant information by accessing TIPO's website at http://www.tipo.gov.tw/.

Do not use another party's well-known trademark as one's own trademark.
The Trademark Act clearly forbids the registration of any trademark that is identical or similar to a well-known trademark. The protection of a well-known trademark does not depend on the prerequisite that the well-known trademark has to be registered in the ROC. Instead, protection is granted as long as the well-known trademark is recognized commonly by the domestic consumers. Moreover, the protection thereof is not confined to goods identical or similar to those covered by the well-known trademark, but extends to dissimilar goods. Therefore, the public must not think that they can plagiarize, use or deliberately register a well-known trademark that has not been registered in the ROC. In violation of the above, the right holder of the well-known trademark who suffers damages from the violation may request to terminate the use or request to cancel the trademark registration.

Do not use a trademark containing any word or figure that will easily cause consumers to misidentify the contents, nature, quality, or place of origin of the goods.
In other words, the use of any word or figure that will mislead or deceive consumers is prohibited in the Trademark Act. For instance, "烏蔘" (black ginseng) for chicken will cause the public to misidentify the goods as containing ginseng; the use of "紅標" (red label), which was first used on rice wine by Taiwan Tobacco and Wine Company, for medicated liquor will cause the public to believe that it is rice wine or contains rice wine as an ingredient. If the applicant is a producer of dairy products in Hsiangshan District of Hsinchu but uses "初鹿" (Chu-Lu, a city in Taitung) on fresh milk products, the public may misidentify the products as being produced in Chu-Lu, Taitung, and misidentify the place of origin. All of the above examples are prohibited under the Trademark Act.

Compared to a single-class application, a multi-class application reduces the overall filling time since only one application and one copy of relevant attachments are required, the application procedures are thus simplified. Moreover, costs are also reduced because after the multi-class application is approved for registration, government fees related to the recordation of change, assignment, license or pledge will be calculated "per application". It should, however, be noted that:

filing fees, registration fees and renewal fees are calculated "per class" rather than "per application"; in dividing a trademark, the division fees for the increased trademarks and the fees for disputes resolution, if applicable, shall also be paid; and in the case of a multi-class application, the issue of multiple priorities may arise.

Yes. Most countries recognize that where goods or services applying an identical trademark or similar trademarks are unlikely to cause confusion in the market and will not cause unfair competition, they may be registered or used by different people or business entities. In general, if the use of trademarks that are not well-known or are not of high originality for dissimilar goods by different manufacturers, they are unlikely to confuse consumers about the source of goods, thus may be filed separately.

Any word, figure, symbol, color, sound, three-dimensional shape or any combination thereof contained in a trademark shall be distinctive enough to allow a relevant consumer to identify the trade source of certain goods/services of a certain manufacturer or merchant and to distinguish such goods or services, and thus, is deemed to have distinctiveness. After a trademark is registered, the trademark right holder thereof enjoys the right to exclusively use the same and exclude the use by others. Therefore, a trademark as a whole must be distinctive. In case a trademark contains any descriptive or non-distinctive word or figure, the applicant may declare that such portion (word or figure) is not for exclusive use apart from the trademark to avoid being rejected, since that portion may arouse disputes over the right to use that portion exclusively after the trademark is registered. The applicant may make a disclaimer of exclusive use if any of the following conditions apply: （§19, Trademark Act）

The trademark contains descriptive or non-distinctive word or figure;
Deletion of part of the wording or figure from the trademark will make the trademark incomplete; and The applicant declares that the right to exclusive use of such portion shall not be made apart from the entire trademark.

After a trademark application has been approved, the trademark registration shall not be published after payment of the registration fee has been paid. The payment should be made within two months from the date following the approval decision. The trademark rights related thereto are accorded on the date when the trademark registration is published, and the registration certificate is delivered by postal service immediately after the publication of the registration. Where the required fee for an approved trademark remains unpaid by the end of the stipulated period, the original approval shall be void. (§25 II, Trademark Act)