"*~FAQs for Patent~*"

Taiwan Divisional Practices

  If desired, it is possible to file further divisional application(s) before receiving the notice(s) of allowance for the corresponding parent application(s). That is, if there is/are a pending divisional application(s), even if the parent application has been granted and/or issued, it is still possible to file a further divisional application(s) based on the pending divisional application.

  The claims for a divisional application could be filed within sixth months from the filing date. It is impossible to file a divisional application with the same Claims as the parent application. There is no limit on the number of divisional applications that can be filed.

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Assignment/Transfer/Address-Change/Name-Change Recordals

  For effecting an assignment recordal in Taiwan, it will be necessary to submit a simple assignment(s), a certified/notarized copy of the assignment or an apparently true copy of the assignment, and Power of Attorney of the assignee together with the original of Patent Certificate if the patent has been issued. In addition, for the required document(s), e.g. the simple assignment and the power, it will be appropriate to be completed and executed by the Assignee in English.

  It will be necessary in this country to have the changes in the registered proprietor if we are imminent to claim rights against an infringer. If not, this can be done in any time in the future. For postponing the registration, the only problem is that the correct proprietor taking over the rights shall have no locus standi against the third parties. We can however petition the recordal of the changes immediately upon claiming the right(s) to avoid such problems. It, however, will cost us about 3 or 6 months.

  For proceeding a transferring recordal of pending application or registered patent in Taiwan, the normal service fee will generally be NT$8,000 and the Official fee is NT$2,000 (pending) or 3,500 (granted) respectively.

  For proceeding an address-change recordal of pending application or registered patent, the normal service fee will generally be NT$2,000 without any Official fee. In addition, the disbursements will be generally NT$1,000 for the first case.

  There must be a name-change evidence document. It will be alternatively appropriate to submit its carbon copy with a written statement clarifying the original has been saved with the Client. We also need the power of attorney executed by the patentee with the new name and address. Finally, if applicable, the original Certificate of the Patent needs be returned to the Intellectual Property Office to be recorded with the correct patentee¡¦s name.

  For effectuating such recordals, our service and official fees will be generally NT$3,000 and 300 respectively. The disbursements will be around NT$2,000.

  For any of the above recordals, we however will discount from 20% to 80% depending on the necessitated procedures for further respective ones in a bundle of applications.

  For execution on any appropriate form, the original representative on records for a party should be kept in a later document. Otherwise, it will be necessary to petition the name-change record of the representative by submitting, e.g. the notarized certification of corporation of the Assignor clarifying a new signing person is indeed the new representative.

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Assignment Form

  If it will be impossible to obtain the signature(s) of the inventor, we must submit ¡§a notarized employment agreement of such inventor(s)¡¨ or ¡§a certified assignment and a certified combined declaration and Power of Attorney from the USPTO¡¨ (alternatively, copy of these signed documents submitting to the USPTO can be notarized). In addition, the Applicant must also provide an affidavit declaring how it has derived the rights of the invention entitled as above and invented by such inventor(s) during his/their employment under the Applicant¡¦s company until which date and that the Applicant shall be punishable under applicable laws if what is declared is found untrue. The underlined portions should be clearly stated in the affidavit. Accordingly, only a copy of the US assignment is not enough. Specifically, we must have a notarized or certified copy of the US declaration and assignment together with the affidavit from the applicant. All these papers can be belatedly filed with the Patent Office if we make a statement upon filing the above-captioned application.

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