Differences between Inventions and Utility Models

An invention covers a wider range of protection, including methods, articles (having definite spatial forms), substances (not having definite spatial forms), and biological materials and their applications. A utility model’s protection is limited to articles only.

Non-statutory subject matters

(1) Animals, plants, and essentially biological processes for the production of animals or plants, except for processes that produce microorganisms;
(2) Diagnostic, therapeutic or surgical operation methods for the treatment of humans or animals; and
(3) An invention which is contrary to public order, morality or public health.

FILING REQUIREMENTS

The following documents and information are required in an initial filing.
1. Specification, claims and drawings (if any)
2. The basic filing dates and filing numbers for application filed in another country.
3. The name, address and nationality of the inventor(s)/applicant(s) and the representative of a company/legal entity.
The following documents can be filed within four (4) months from the filing date.
1. An original Power of Attorney signed by the applicant.
2. An original Oath signed by the inventor.
3. An original Assignment ( or Certificate of Application Right) signed by the inventor if the inventor and applicant are not the same person.
4. Certified copy of the priority document if priority is to be claimed.

PRIORITY

If priority is to be claimed, the detailed priority information should be initially indicated in the application which shall be filed within twelve (12) months from the next day of the first application in a country reciprocating with Taiwan, R.O.C. A certified copy of the priority document should be supplemented within 4 months after the filing of application. Priority can be claimed for patent applications in the member nations of WTO.

Early Publication

Invention patent application shall be published after 18 months from the day following the filing date (or the priority date, if priority is claimed) if it is not inconsistent with the required format or should not be published. The IPO may advance the time of publishing a patent application upon the applicant petition.

Request for substantive examination

Any one may file a written request for substantive examination within 3 years from the day following the filing date (or the priority date, if priority is claimed) of an invention patent application. If an invention is worked by a person other than the applicant after the pre-examination publication but before the post-examination publication of the application, the IPO shall examine the application first upon request. If no request for substantive examination is filed within the time limits prescribed above, the relevant invention application will be deemed to be withdrawn afterwards.

Domestic priority system

The applicant may claim the priority from the earlier filed Taiwan invention or utility model patent application. However, the priority cannot be claimed under any of the following circumstances:
(1) the domestic priority claim is filed more than 12 months after the date following the filing date of the basic application;
(2) The international or domestic priority has been claimed to said earlier filed application under Article 24 or 25-1 of Taiwan Patent Law;
(3) The earlier filed application is a division application filed under Article 32, or a converted application filed under Article 101 of Taiwan Patent Law; or
(4) The earlier filed application has been examined and the decision has been made.

When an invention (or utility model) patent application serves as the basis for a domestic priority claim for a subsequent invention application, the basic invention (or utility model) patent application will be deemed to be withdrawn after fifteen (15) months from the date following the filing date of the basic application. After the 15-month period, the applicant is not allowed to withdraw the domestic priority claim based on the basic application.

Formality Examination

There is no substantive examination for utility model applications. If an application is in order, a utiltiy model will be granted for registration.

Non-statutory subject matters

(1) Where the utility model is not directed to the form, construction or installation. For example, a process patent can only be applied as an invention, not a utility model;
(2) A utility model patent application which is contrary to public order, morality or public health;
(3) Where the specification, claims and drawings are in violation of the written description requirement prescribed in Paragraphs 1 or 4 of Article 26, which shall apply mutatis mutandis to utility model patents under Article 108;
(4) Where the utility model is in violation of the unity of invention requirement prescribed in Article 32, which shall apply mutatis mutandis to utility model patents under Article 108; or
(5) Where the specification, claims and drawings fail to disclose essential matters or are obviously indefinite. This refers to obvious flaws that can be identified in a formality examination.

FILING REQUIREMENTS

The following documents and information are required in an initial filing.
1. Specification, claims and drawings (if any)
2. The basic filing dates and filing numbers for application filed in another country.
3. The name, address and nationality of the inventor(s)/applicant(s) and the representative of a company/legal entity.
The following documents can be filed within four (4) months from the filing date.
1. An original Power of Attorney signed by the applicant.
2. An original Oath signed by the inventor.
3. An original Assignment ( or Certificate of Application Right) signed by the inventor if the inventor and applicant are not the same person.
4. Certified copy of the priority document if priority is to be claimed.

PRIORITY

If priority is to be claimed, the detailed priority information should be initially indicated in the application which shall be filed within twelve (12) months from the next day of the first application in a country reciprocating with Taiwan, R.O.C. A certified copy of the priority document should be supplemented within 4 months after the filing of application. Priority can be claimed for patent applications in the member nations of WTO.

Design & Associated Design

A design refers to any creation made in respect of the shape, pattern, color, or combination thereof of an article through visual appeal. Thus, it can be defined that a design uses the shape, pattern, color, or combination of an article to enhance its quality, affinity, and value through visual effects in order to increase market competitiveness and visual contentment. If a person makes a creation that originates from and is similar to his/her original design (parent design), he/she should file for an “associated design” patent application.

Non-statutory subject matters

(1) An article of which the shape is solely dictated by the functions of said article;
(2) A pure fine artistic creation or work;
(3) Layout of integrated circuits and electronic circuits;
(4) An article which is contrary to public order, morality or public health; and
(5) An article of which the shape is identical or similar to a political party flag, the national flag, a portrait of the National Father of the ROC, the national emblem, military flags, an official seal, or a medal awarded by the government.

FILING REQUIREMENTS

The following documents and information are required in an initial filing.
1. Specification, claims and drawings

the specification with drawings or photographs shall show front, rear, right, left, top, bottom, and perspective views of the subject matter sought to be patented, and shall included a brief description of the subject matter. The size of photo is smaller than 15cm x 22cm and larger than 9cm x 16 cm, and background of the photo is single color.

2. The basic filing dates and filing numbers for application filed in another country.
3. The name, address and nationality of the inventor(s)/applicant(s) and the representative of a company/legal entity.
The following documents can be filed within four (4) months from the filing date.
1. An original Power of Attorney signed by the applicant.
2. An original Oath signed by the inventor.
3. An original Assignment ( or Certificate of Application Right) signed by the inventor if the inventor and applicant are not the same person.
4. Certified copy of the priority document if priority is to be claimed.

PRIORITY

If priority is to be claimed, the detailed priority information should be initially indicated in the application which shall be filed within six (6) months from the next day of the first application in a country reciprocating with Taiwan, R.O.C. A certified copy of the priority document should be supplemented within 4 months after the filing of application. Priority can be claimed for patent applications in the member nations of WTO.