Taiwan government in its revised Patent Act promulgated on February 6, 2003 made several important changes, including,but not limited to, repealing the substantive examination on utility model patents and the opposition systems, etc.Recently, the government decided that the revised Patent Act will formally be enforced as from July 1, 2004. In conformance with the revisions made on the Patent Act,the Taiwan Intellectual Property Office (TIPO) also adjusted the official fees payable on patent matters and published a new tariff to become effective as from July 1, 2004.For your reference, the major change in the government official fees for patent matters in Taiwan is summarized as below.
| New (After July 1, 2004) | Old (Before July 1, 2004) | ||
|---|---|---|---|
| Invention Patent | Filing an Invention Patent Application | NT$3,500 | NT$2,000 |
| Request for Substantive Examination* | NT$8,000 | NT$6,000 | |
| Request for Re-examination* | NT$8,000 | NT$6,000 | |
| Invalidation Trial | NT$10,000 | NT$9,000 | |
| Utility Model Patent | Filing a Utility Model Patent Application | NT$3,000 | NT$4,500 |
| Conversion from Invention Patent to Utility Model Patent | NT$3,000 | NT$4,500 | |
| Invalidation trial | NT$9,000 | NT$8,500 | |
| Request for Utility Model Technical Verification Report | NT$5,000 | - | |
| Design Patent | Filing a Design Patent Application | NT$3,000 | NT$3,000 |
| Request for Re-examination | NT$3,500 | NT$3,500 | |
| Invalidation Trial | NT$8,000 | NT$8,000 | |
| Supplement for Grounds/Exhibits for Invalidation Trial | NT$2,000 | NT$1,000 | |
| Filing an Interview | NT$1,000 | NT$2,000 | |
| Recordal of Assignment of Pending Application | NT$2,000 | NT$2,000 | |
| Recordal of Assignment of Granted Patent | NT$2,000 | NT$3,500 | |
| Obtaining Certified Copy / English Certificate | NT$1,000 | NT$600 | |
| Sealing Fee and Annuities | Sealing Fee (Certificate of Letters Patent) | NT$1,000 | NT$2,500 |
| 1st- 3rd Annuity / Each year | **NT$2,500 | NT$2,500 | |
| 4th - 6th Annuity / Each year | **NT$5,000 | NT$5,000 | |
| 7th- 9th Annuity / Each year | NT$9,000 | NT$10,000 | |
| From 10th Annuity onward / Each year | NT$18,000 | NT$20,000 | |
| (Exchange Rate US$1=NT$32) | |||
*For Specification and Drawings less than 50 pages (NT$500 will be incurred for each additional 50 pages).
**Where the patentee is a natural person, a school,or a medium/small enterprise, a written application may be filed with TIPO to reduce each of the 1st to 3rd annuities by NT$800, and each of the 4th to 6th annuities by NT$1200.
Remission on Patent Annuities for 1st to 6th Year
As mentioned above, qualified patentee can enjoy reduced fees for his 1st to 6th annuities.Specifically, school in general refers to an educational institution recognized and approved by the Ministry of Education; and medium/small enterprises refer to those companies which meet with the Recognized Standards for Medium or Small Enterprises promulgated by the Ministry of Economic Affairs, such as a manufacturer whose actual capital is less than NT$80 million (about US$2.5 million); and for those in the agricultural, fishery, and service industry areas, etc., the annual turnovers must be less than NT$100 million (about US$3.1 million).
In order to apply for the reduced fees, according to the “Measures on Remission on Patent Annuities” promulgated by the Ministry of Economic Affairs on January 14, 2004, an application filed by the patentee, accompanied by a power of attorney, has to be submitted by the local patent agent/attorney with TIPO for approval. Also, in the course of examination, TIPO may request the applicant to submit relevant exhibits to prove eligibility.
Accordingly, it is likely that few foreign patentees will file applications to enjoy such remission of annuities if taking into consideration of the small amount of remission, the short term (only 1st to 6th year) plus the accompanying cost which may arise for filing such a remission application.
Request for Substantive Examination
Starting from October 26, 2001, Taiwanese invention patent application must be filed requests for substantive examination within three years from the filing date of said patent application. As can be seen from the above, the official fee for filing a request on substantive examination has been raised 34% (about US$63) after July 1, 2004.However if the request is filed by June 30, 2004, the current lower official fee will still be applicable.
Remarks: While every endeavor will be made by our office to send out separate notice by June 15, 2004, for patent application which a request for substantive examination has not yet been filed, please let us know if you do not receive such notice in respect to the cases handled by this office or give us your express instructions directly if a request for substantive examination is to be filed before June 30, 2004.
