Taiwan Patent Right Restoration Practice

1. In the Taiwan patent system, there are three types of patents, namely invention patent, utility model patent and design patent. For a patent application, the applicant will have to pay the issue fee and first annuity within 3 months upon receipt of a Notice of Allowance from Taiwan Intellectual Property Office (TIPO). The patent application will then be published when a Letters Patent is issued thereon.

2. Per the current practice, TIPO will publish the issued patents on the 1st day, 11th day or 21st day of each month. To maintain a patent right, the second and/or its subsequent annuity of a granted patent must be paid before the expiration of its first annuity and/or the publication date of each anniversary.
   
   For example, if a patent was published on April 1, 2019, i.e. after the first annuity was paid, then the patentee must automatically pay the second annuity by March 31, 2020.

3. If the Patentee has missed the payment of second or its subsequent annuity by the due date, said annuity can be paid within 6 months of a grace period with an overdue payment (surcharge fine) at a 20% proportion rate of the annuity on a monthly basis and the maximum surcharge fine will be 100% of the original annuity payment.
   
   Continuing the previous example, the grace period for second annuity of said patent would be from April 1, 2020 to September 30, 2020.

4. If an annuity was not paid by the original due date of each anniversary or its grace period, the patent right would become extinguished after the expiration of said original due date. In case the Patentee has unintentionally failed to pay an annuity beyond the grace period, and intended to restore the patent right, a reinstatement request can be filed within one year after the expiration of said grace period by paying a triple amount of the annuity fee.
   
   For the previous example, if the annuity was not paid by September 30, 2020, a reinstatement request can be filed within one year, between October 1, 2020 to September 30, 2021, by paying the triple amount of a regular annuity fee (or reduced annuity fee for a qualified Patentee).
   
   When the Patentee is attended to the payment of above triple amount of annuity fee, it is may be necessary to pay the next annuity at the same time, avoiding an overdue payment of said next annuity.

5. A patent annuity can be paid by an agent who is not the recorded agent of said patent per TIPO’ s file. However, a reinstatement request should be filed by the same agent who was the recorded agent when filing the patent application. Otherwise, the non-recorded agent must have a special restricted and signed Power of Attorney by Patentee when requesting reinstatement of a patent right.

6. The following are necessary documents for filing above reinstatement request:
   • 1) A written application stating the Patentee has unintentionally failed to pay the annuity by the due date. In Taiwan, it is usually not necessary to provide an evidencing document or reasons for unintentional failure of payment.
     
   • 2) A signed Power of Attorney by the Patentee appointing an agent to file the reinstatement request. The Power of Attorney shall be signed by a person authorized by the Patentee, namely, an authorized signatory, rather than a proxy (not acceptable by TIPO). If the Patent is a Japanese company, the Power of Attorney can be executed by an authorized signatory in English, instead of the company seal and representative seal.
     
   • 3) However for a Taiwanese Corporate Patentee, a corporate seal and representative’s chop must be used on the said Power of Attorney.

Taiwan Patent Right Restoration Practice