ON RECORDAL OF ASSIGNMENT AND CHANGE OF PATENT AND TRADEMARK PARTICULARS IN TAIWAN

I. GENERAL RULES

1. In Taiwan, for trademark right transfer, it is referred to as “transfer”(移轉), whereas for patent right transfer, it is referred to as “assignment”(讓與). (Hereinafter they will all be referred to as “assignment”)
2. In recordal of patent assignment or relevant change of particulars, the recordal could be filed by one of the Assignor or Assignee and it is not necessary to be filed by both parties. If the assignment is filed by the Assignee, then the Assignor would not need to submit a new Power of Attorney (POA) and, thus, would be preferable.
3. In recordal of trademark assignment, it must be filed in the name of the Assignee as the party requesting for recordation, thus the Assignee must execute a POA to the trademark agent for handling the recordal of assignment matters.
4. In Taiwan, for recordal of merger or acquisition or relevant change of partuculars, it must be proceeded as a Recordal of Assignment and a mere recordal of change of name may not be acceptable.
5. For recordal of a series of multiple assignments and relevant change of name, address, representative, it could be recorded by only one Assignment with the relevant changes and it is not necessary to file separately the individual assignments/changes so as to save the cost. However for each recordal process or assignment, they must be supported by official or certified documentations.
6. In recordal of assignment (except for merger/acquisition), a deed of assignment executed by the Assignor and Assignee must be produced and submitted with Taiwan Intellectual Propert Office (TIPO). The seals and chops or signatures used in the Deed of Assignment must be identical/conform with the original seals and chops or signatures originally recorded in TIPO when the patent /trademark was filed, otherwise other documents must be produced to attest that the current seals/chops used or signatures are the true and legal ones.
7. In Taiwan, different patent/trademark examiners may have their own standards used and discretion to examine the recordal applications, so the applicant cannot claim that as one of the patent or trademark recordal has been approved that the other trademark or patent recordal should also be approved.
8. Taking over the representation of a patent/trademark in recordal of assignment.
   TRADEMARK
   The agent shall take over the representation of the trademark which is to be recorded with assignment and after recordal of assignment, the said trademark shall be represented by the said agent in the official record of TIPO.
   PATENT
   The agent who filed the recordal of assignment needs not to take over the representation of the said patent and so the patentee (applicant) could produce and hand a restricted POA to the said agent with limitation of entrusted power merely be restricted to the recordal of assignment only. Therefore after assignment the said patent (or pending application) will become as a patent without any recorded patent agent in Taiwan. However, per the Taiwan Patent Act as a foreign applicant (patentee) has to be represented by a local patent agent, TIPO will then, simultaneously with the issue of approval for recordal of assignment, issue an official letter requesting the assignee of said patent to manage the said patent yet without setting a prescribed period. (For a pending application, TIPO will set a prescribed period to the Assignee to designate a new patent agent to further prosecute the said patent application.)
9. Per the TIPO’s record of a patent/trademark, a patent/trademark applicant must be represented by a local patent/trademark agent, so the Assignor would have a local agent existed. Yet when a recordal of assignment is proceeded by the patent agent with a restricted power of attorney, the authorized power given to the said patent/trademark agent will become finished when the recordal of assignment is completed. Thus for trademark assignment, the Assignee cannot issue a restricted power of attorney to the local agent for proceeding the recordal of assignment. Namely for trademark assignment, the trademark agent who handles the assignment will continue to be the representative of said trademark in Taiwan. Whereas for recordal of patent assignment, a restricted Power of Attorney may be used to record the assignment, yet after recordal, the said patent agent will lost his power to represent the said patent in Taiwan and the said patent will become a patent without a patent agent on record.
10. As mentioned above, the practices for recordal of trademark assignment and patent assignment are different in Taiwan, therefore in issuing a Power of Attorney to the local trademark or patent agents for proceeding the recordal, it is preferable to use the different forms.

II. Required Documents and Official Fees

*Not including the agent’s fees.

III. Notices on handling the Patent and Trademark Assignments

Trademarks

1. If signature was used by the Assignor for filing the original application
   • The Assignor does not need to submit a Power of Attorney.
   • The Assignee must submit a new Power of Attorney by signature or sealed with Company seal/chop.
   • In the Deed of Assignment – The Assignor may execute the Assignment by signature and it could be signed by a new Representative authorized by the Assignor.
2. If Company seal/personal chop was used by the Assignor for filing the original application -(In particular for those applicants from Japan, Taiwan or China).
   • The Assignor does not need to submit a Power of Attorney.
   • The Assignee must submit a new Power of Attorney – executed by signature or sealed with Company seal/chop could all be acceptable.
   • In the Deed of Assignment
     • The Assignor may execute the Assignment by using the same seal/chop.
     • If the Assignor wishes to execute by signature, he must produce a deposition with attachment of the representative’s ID card/passport to attest he is authorized by the Assignor to sign.
     • In the Deed of Assignment it must clearly show the Assignor’s English/Japanese company name i to confirm that the Assignor was the original applicant.
     • If the Assignor executed the Assignment by using a different company seal/chop, a deposition must be produced with attachment of photocopy of Representative’s ID card/passport to attest that the said seal/chop is a legal one.

Patents

1. If signature was used by the Assignor for filing the original application.
   • The Assignor does not need to submit a Power of Attorney.
   • The Assignee must submit a new Power of Attorney – by signature or sealed with company seal/chop.
   • In the Deed of Assignment
     1. The Assignor may execute the Assignment by signature and it could be signed by a new Representative authorized by the Assignor.
     2. The Assignee may execute the Assignment by using signature or company seal/chop but they must be identical with the ones shown on Power of Attorney.
2. If Company seal/personal chop was used by the Assignor for filing the original application -(In particular for those applicants from Japan, Taiwan or China).
   • The Assignor does not need to submit a Power of Attorney.
   • If the Assignor wishes to execute the Assignment by using signature, he must produce a undertaking attesting that Representative who signed in the Assignment is authorized by the Assignor.
   • In the Deed of Assignment it must clearly show the Assignor’s English/Japanese company name to confirm that the Assignor was the original applicant.
   • If the Assignor intends to use a different set of Company seal/chop, he must undertake that the new set of Company seal/chop is a legal one.