In Taiwan, when the Taiwan Intellectual Property Office renders a Notice of Allowance to a patent application, the applicant must then attend to the issue fee and first-year annuity fee within 3 months upon receipt of said Notice in order to obtain the patent certificate.
Thereafter, the applicant will be required to attend to the second annuity and its subsequent annuity fees within the statutory term; in failure to attend to the annuity fee within prescribed term, the applicant will lose the patent right. According to the revised Taiwan Patent Act to be enforced on January 1, 2013, there are several important changes in concern with patent annuity matters, and they are:
- Restoration of right (Article 52 and Article 70)
Per the prevailing Patent Act, if the patent lapsed, an applicant may file within 30 days after the expiration of the validity (not beyond one year after the expiration), a request to restore its patent right should the default of payment be caused by natural calamities or causes. However it is difficult in practice for the applicant to request such reinstatement. In the revised Patent Act, the following offers reinstatement for applicant who has unintentionally failed to pay the fees within the statutory term:
| Default of payment | Payment for reinstatement |
|---|
| Issue fee and first annuity | If within the six months grace period, issue fee plus twice the amount of the first annuity is to be paid |
| Second annuity and its subsequent annuities | If within one year after the six-month grace month, then triple the amount of the annuity is to be paid |
- Annuity fee to be paid within six-month grace period (Article 94)
Per the prevailing Patent Act, if annuity is to be paid within the six-month grace period, an applicant can restore its patent validity by paying the appropriate annuity fee, plus an overdue payment (fine) equal to the amount of its annuity. The amount of the overdue payment (fine) according to the revised provision, will be calculated on a 20% proportion rate, depending upon number of delayed months, or up to a maximum of 100% of the normal annuity fee; also, a one-day delay is deemed as a one month delay.
| 1st month | 2nd month | 3rd month | 4th month | 5th month | 6th month |
|---|
| 20% | 40% | 60% | 80% | 100% | 100% |
- Annuity fee for derivative design patent (Article 135 and Article 137)
Per the prevailing Patent Act, an applicant can file a parent design application and an associated design application for similar designs. Per the revised Act, associated design system will be abolished and a derivative design system will be introduced. Please see the below:
| Prevailing Patent Act | Revised Patent Act |
|---|
| Associated design patent | Derivative design patent |
| Only a design patent needs to pay annuity, and associated patent needs not pay. | A derivative design patent needs to pay annuity (and its parent design also needs to pay). |
| The patent term of an associated design patent is to expire simultaneously with its parent design patent (12 years from the filing date of a design application). | The patent term of a derivative design patent shall expire simultaneously with its parent design patent (12 years from the filing date of a design application) |
| The associated design patent shall be revoked or lapsed at the same time when its parent design patent has been revoked or lapsed. | The patent right of a derivative design patent may be maintained regardless of whether its parent design patent has been revoked or lapsed. |
- Transitional provisions
It is to be noted that the above changes in concern with the restoration of patent rights and overdue payment within the 6-month grace period would apply to those patents which are still valid after the enforcement of revised Patent Act.
