Unlike some of the major IP countries, a design is protected in Taiwan under Patent Act after substantive examination. More specifically, if a design patent application has met formality requirements upon filing, the Taiwan Intellectual Property Office (TIPO) will automatically conduct substantive examination thereon. According to the time schedule for standard examination by TIPO, the processing time for a design application in primary stage is 8 months and its average time of issuing first examination opinion is 6 months, while the processing time for a design application in re-examination stage is 10 months and its average time of issuing first examination opinion is 6 months. Although the design application undergoes substantial examination, the application has a short pendency period.
In consideration of the applicant’s timeline for patent strategy and product marketing, TIPO has launched a new scheme starting from July 1, 2018 for the applicant to file a deferment request for substantive examination on a design patent application. There is no official fee for filing such deferment request. The applicant only needs to file a written application by expressly stating the date for TIPO to continue the substantive examination on the design application.
The above request to defer the substantive examination is applicable to a design patent application at primary examination. It can be made at the time of filing a design application, or after its filing. However, the request must be filed within one year from the filing date or priority date of the design application, and notably before:
- The issuance of an official action or a decision; or
- The filing of a divisional application.
In addition, if the applicant has filed a deferment request but then decides to continue the prosecution earlier than expected, they may withdraw the deferment request or change the date (within the above mentioned one-year period of filing date or priority date) for continuing the substantive examination by TIPO. For a design application that has been allowed after substantive examination, if the applicant does not wish for the design to be published before it is filed in a foreign country, the applicant may file a request for deferment of publication (from one to six months) when paying the issue fee and annuity fee within 3 months upon receipt of the Notice of Allowance.
