Since the coronavirus pandemic erupted in early 2020 throughout the whole world, there are over 240 million confirmed cases and more than 4 million deaths, according to latest WHO statistics. Taiwan learnt from previous SARS experience and started early preventive measures including wearing masks by people, and the government also implemented entry restrictions and 14-day hotel quarantine. By mid-October 2021, Taiwan has only 16,347 infected cases and 846 deaths. Although the pandemic has recently begun to alleviate in Taiwan, many small and medium size businesses were infected, especially the sectors of travel and tourism, restaurant and catering, etc. Patent filings also decreased, despite the positive growth of trademark filings.
Taiwan Intellectual Property Office (TIPO) made announcements in January, April and May 2020 that a request of reinstatement or an extension of term could be filed for patent and trademark cases failing to meet the statutory or prescribed period for reasons not attributable to the applicant. Regarding the delay of statutory period, the reinstatement request is based on Paragraph 2, Article 17 of Taiwan Patent Act plus Rule 12 of its Enforcement Rules, and Paragraph 2, Article 8 of Taiwan Trademark Act plus Rule 9 of its Enforcement Rules.
According to TIPO statistics till August 2021, a total of 181 cases were filed for requesting reinstatement of which mostly are patent cases. TIPO approved reinstatements of 140 cases, i.e. the success percentage is about 80% of reinstatement cases filed, including 112 cases for the submission of certified priority document.
Taiwan Intellectual Property Office (TIPO) recently explained the failure to act within the statutory period could be two types: 1) the applicant has delayed the filing of an application within its statutory period, for example, a patent application within the period of priority claim, or 2) the applicant has delayed the submission of an outstanding document within its statutory period, for example, the certified priority document for a patent application. In order to request for reinstatement of a patent or trademark case, the applicant must file a written application accompanied by proof document(s) as set forth below.
| Types of Delay to meet Statutory Period | Proof documents for request of reinstatement |
|---|---|
| Delay of filing an application | 。Emergency order by local government 。Proof for lockdown of city/prefecture/premise, entry or travel restrictions, or suspension of transport or postal services 。Enforcement order by local government for closure of businesses, stay-at-home order or work-at-home order by central government or city/county government |
| Delay of submitting an outstanding document | 。Proof for delay of issuance by foreign competent patent/trademark authority 。Official letter by foreign competent patent/trademark authority or relevant postal document 。Official receipt issued for acknowledging the request of foreign priority document and proving said request was filed before the expiration of statutory period 。Postal or courier information showing the delivery of priority document was delayed and beyond the statutory period |
Situations not allowable for reinstatement: general news report without specific incident or concrete reasons; interoffice announcement for self-closure of work or working on shifts due to the pandemic, without enforcement order by city/county government; self-quarantine of an individual while the whole company was in normal operation; declaration or statement by the patent/trademark applicant self-attesting the delay was caused by the pandemic; the timing of incident is beyond the expiration of enforcement order issued by the local government.
In addition, TIPO further explained that the proof document and the delayed period for requesting the reinstatement must have a cause-and-effect relationship. The proof document must be issued by a competent authority or government (such as USPTO) or a third party with credibility (e.g. DHL or Fedex). For example, a certified priority document was usually issued within 7 working days under normal condition by USPTO, yet said issuance has been delayed for more than one month after the outbreak of COVID-19. Also, the reinstatement request will be examined on a case-by-case basis and sometimes may be difficult to be approved by TIPO. For example, if the applicant has not filed with the patent competent authority for issuance of a certified priority document before the due date, or the applicant files a reinstatement request by personal reasons not related to the pandemic.
