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What is a patent? |
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When we want to protect the rights of an invention or a creation, we apply through the Taiwan Intellectual Property Office (hereinafter referred to as “TIPO”) for a patent. Patent rights are granted after the application is examined and approved under the Patent Act. The patentee of a patented article shall have the exclusive right to preclude others from manufacturing, selling, contracting to sell or use, or importing the patented article for any of the above purposes without his/her prior consent. The patentee of a patented process shall have the exclusive right to preclude others from using such process and from using, selling, contracting, or importing finished products that are made by the patented process without his/her prior consent. These rights are called “patent rights.” |
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How many categories of “patents” are provided for in the Patent Act? |
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“Patents” are classified differently in different countries. Pursuant to the provisions of the ROC Patent Act, “patents” are classified into three categories, invention patents, utility model patents, and design patents. |
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What is an invention patent? |
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Pursuant to the provision of Article 21 of the Patent Act, an invention refers to any creation of technical concepts by utilizing the rules of nature. Thus, it can be defined that an invention is a creation of technical concepts that utilizes the rules of nature to reflect on the application of an article or a method.
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What is a utility model patent? |
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Pursuant to the provision of Article 93 of the Patent Act, a utility model refers to any creation of technical concepts by utilizing the rules of nature, in respect of the form, construction or installation of an article. Thus, it can be defined that a utility model is a creation of technical concepts that utilizes the rules of nature to reflect the innovation of a form, construction, or installation of an article that possesses a new purpose or improved efficacy. |
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What is a design patent? |
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Pursuant to the provision of Paragraph 1, Article 109 of the Patent Act, a design refers to any creation made in respect of the shape, pattern, color, or combination thereof of an article through visual appeal. Thus, it can be defined that a design uses the shape, pattern, color, or combination of an article to enhance its quality, affinity, and value through visual effects in order to increase market competitiveness and visual contentment. |
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What is an associated design patent? |
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If a person makes a creation that originates from and is similar to his/her original design (parent design), he/she should file for an “associated design” patent application. |
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Is there a time limit for filing an associated design? |
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An associated design patent serves to define the scope of similarity of the original design (parent design), but does not have independent patent rights. An associated design patent application can only be filed if it is similar to its original design (parent design). An associated design can be filed by the same person while the parent design’s application is pending (including on the date of filing) or while the original design patent is still valid.
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What kind of art can be filed as an invention patent, but not as a utility model patent? |
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An invention and a utility model protect different subjects. An invention covers a wider range of protection, including methods, articles (having definite spatial forms), substances (not having definite spatial forms), and biological materials and their applications. A utility model’s protection is limited to articles only. |
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How does one distinguish a design patent from a utility model patent and an invention patent? |
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A design patent should emphasize the enhancement of its visual effect to visually attract general consumers and to generate purchasing interest. Thus, a design uses the shape, pattern, color, or combination of an article to enhance its quality, affinity, and value through visual effects in order to increase market competitiveness and visual contentment. However, a utility model patent and an invention patent aim to improve an article’s convenience in its function, technique, manufacturing and application. |
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What is the non-statutory subject matter for an invention patent? |
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Although some technologies meet all patent conditions, they are not granted invention patents according to the Patent Act. These technologies are referred to as non-statutory subject matter. According to Article 24 of the Patent Act, non-statutory subject matter for an invention patent includes:
(1) Animals, plants, and essentially biological processes for the production of animals or plants, except for processes that produce microorganisms;
(2) Diagnostic, therapeutic or surgical operation methods for the treatment of humans or animals; and
(3) An invention which is contrary to public order, morality or public health. |
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What is the non-statutory subject matter for a utility model patent? |
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According to Paragraph 1, Article 97 of the Patent Act, the non-statutory subject matter for a utility model patent includes:
(1) Where the utility model is not directed to the form, construction or installation. For example, a process patent can only be applied as an invention, not a utility model;
(2) A utility model patent application which is contrary to public order, morality or public health;
(3) Where the specification, claims and drawings are in violation of the written description requirement prescribed in Paragraphs 1 or 4 of Article 26, which shall apply mutatis mutandis to utility model patents under Article 108;
(4) Where the utility model is in violation of the unity of invention requirement prescribed in Article 32, which shall apply mutatis mutandis to utility model patents under Article 108; or
(5) Where the specification, claims and drawings fail to disclose essential matters or are obviously indefinite. This refers to obvious flaws that can be identified in a formality examination. |
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What is the non-statutory subject matter for a design patent? |
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According to Article 112 of the Patent Act, non-statutory subject matter for a design patent includes:
(1) An article of which the shape is solely dictated by the functions of said article;
(2) A pure fine artistic creation or work;
(3) Layout of integrated circuits and electronic circuits;
(4) An article which is contrary to public order, morality or public health; and
(5) An article of which the shape is identical or similar to a political party flag, the national flag, a portrait of the National Father of the ROC, the national emblem, military flags, an official seal, or a medal awarded by the government. |
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Why can’t a discovery be listed as an eligible type of invention patent? |
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This is because creativity is one of the essential elements of an “invention.” Therefore, the discovery of natural matters and phenomenon, such as “minerals,” is merely an act of discovery, and not an act of creation or a creation of technical concepts utilizing the rules of nature. Therefore, discovery is not an eligible type of invention. However, creation obtained from natural matters due to the diligence and creativity of a person (such as chemical substances) can be deemed an invention. In other words, turning a discovered natural phenomenon into an industrial applicable creation of technical concepts is considered an “invention” and not merely an act of discovery.
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Please clarify the scope of “diagnostic, therapeutic or surgical operation methods for the treatment of humans or animals,” as prescribed under the non-statutory subject matter of the Patent Act. |
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“Diagnostic methods for the treatment of humans or animals” refer to diagnostic methods that examine the structures and functions of human or animal organs to gather various data for physicians (or as instructed by physicians) for the purpose of understanding the health condition of humans and animals, including:
(1) Diagnosis, therapy or surgical operations performed on humans or animals to examine internal and external conditions, or the sizes and shapes of various organs of humans and animals. For example: using an X-ray to examine the condition of the internal organs of humans or animals, or methods to examine the degree of skin ulceration; and
(2) Methods prepared in advance for diagnostic purposes, e.g., methods of electron distribution to carry out an electrocardiogram.
“Therapeutic methods for the treatment of humans or animals” include:
(1) Methods used to mitigate and control a patient’s illness, such as medication, injection, or physical therapy;
(2) Methods for the implantation of artificial organs and extremities;
(3) Methods to prevent illness, e.g., methods to prevent cavities, and methods to prevent flu;
(4) Methods prepared in advance for therapeutic purposes, therapeutic methods, or methods to assist in treatment or nursing. For example, methods used to maintain health condition, e.g., massage methods, finger massage methods, and health maintenance methods. Since these methods can be deemed methods to prevent illness, they are categorized as therapeutic methods.
“Surgical operation methods for the treatment of humans or animals” include surgical operation methods, and blood-sampling methods, etc. Other than those intended for therapy or diagnosis, surgical operation methods not intended for the aforesaid purposes, including cosmetic treatment and plastic surgery, are still considered to be surgical operation methods. Anesthesia methods for the purpose of performing surgical operations are also considered to be surgical operation methods. |
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Can patents be granted to scientific principles such as the law of conservation of energy, or mathematical methods? |
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An invention should be any creation of technical concepts utilizing the rules of nature to solve technical problems in accomplishing the objectives of the invention. Therefore, natural laws or scientific principles such as the law of conservation of energy and the law of universal gravitation are scientific principles that are not used to demonstrate technical disclosures, since they are not created by human using the rules of nature. Thus, they are not categorized as inventions. “Mathematical methods” such as the method of calculating the area of a triangle are accomplished through human reasoning, mathematical formulas, and activities of the mind, and are not created by utilizing the rules of nature. However, in a process invention, if a mark used in a mathematical manipulation can correspond to and also demonstrate physical quantity and natural quantity, and if the mathematical manipulation is deemed as regulating the content of physical and chemical reactions, the process is eligible for filing an invention patent because rules of nature are utilized to solve certain technical problems. |
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Can a patent be granted to a method of gripping a ball between fingers and a method of pitching “forkball” |
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No. The method of pitching forkball is solely depended upon an individual’s talent and familiarization of the pitching techniques. It does not possess technical concepts nor can it be repeated by ordinary people after disclosure of the techniques, thus it cannot be categorized as an invention. |
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Are concepts subject to patent protection? |
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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. |
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Are methods of product inspection subject to patent protection? |
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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. |
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Are colors subject to design patent protection? |
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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. |
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Can words be treated as patterns? |
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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. |
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Can design patents be granted to the exterior of a building or landscape design? |
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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. |
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After an application has been filed, is it possible for it to be disclosed? |
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Apart from invention applications that adopt a laid-open system where all applications shall be laid-open eighteen (18) months from the filing date (earliest priority date, if priority right is claimed), before an application is published or laid-open, its contents shall be kept confidential and will not be disclosed. Any improper disclosure is subject to criminal liability and civil liability of compensation for damage. |
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Is it necessary to file an application in the ROC if it has already been filed in a foreign country? To what matters should attention be paid? |
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Patents are territorial. Even though the applicant has filed an application in a foreign country, if he/she intends to seek patent protection in the ROC, an application should still be filed in the ROC. The applicant should also pay attention to the priority date if priority right is claimed. If the application exceeds the prescribed period for claiming priority right, or if the corresponding foreign application had already been laid-open or published before filing an application in the ROC, the patent will lose its novelty. |
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If a product is intended for export, should a patent application be filed in the destination country of the exported product? |
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Patents are territorial. The product will only be protected if it has obtained a patent in the local country. |
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Can foreign patents and techniques used to manufacture locally in the ROC file for patent applications? |
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For patents and techniques that have already been disclosed in a foreign country, unless priority right has been claimed, the patent application shall be rejected in the ROC since it has lost novelty. Moreover, the patent system was enacted to protect and encourage inventions. If one intends to obtain a patent using illegal means, or if one does not research and invent by oneself, but plagiarize and copy another’s techniques and products, such a patent does not comply with the Patent Act. |
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What elements should be considered in filing a foreign or an ROC patent application for an invention or a creation? To what matters should attention be paid when filing a foreign application? |
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Technical innovation, market potential, and technical transfer feasibility are factors in determining the appropriate time for filing a corresponding patent application for an invention or a creation in foreign countries or other areas. Normally, a patent is filed first in the ROC, then in foreign countries. For filing foreign applications, foreign patent attorneys in the designated foreign countries should be entrusted in prosecuting the applications. The applicant should also avoid disclosing the invention or creation before filing to prevent loss of novelty. Furthermore, after filing in the ROC, if it is necessary to file a foreign corresponding application, the applicant should do so as soon as possible to avoid loss of novelty, and vice versa. |
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As the new Patent Act has become effective, according to Article 19 of the Patent Act, can an application be filed by means of electronic operations? |
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Patent applications cannot be filed by means of electronic operations at the moment. Procedures by means of electronic operations as prescribed under Article 19 of the Patent Act shall commence after the regulations governing such practices become effective, together with the establishment of an electronic filing system to receive the applications. Thus, applications can be filed by means of electronic operations after TIPO completes the electronic filing system and promulgates regulations governing such practices. |
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Add: 9F., No. 37, Dongsing Road, Xinyi District, Taipei City 110, Taiwan,(R.O.C.)
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