Question 74. If we ultimately choose to file a patent license agreement, are we able to file versions of the agreement that do not contain confidential information, including pricing information?

Answer: Yes, we could do it in this way.

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Question 75. Does Article 79 require that we record a license agreement to require the licensees with whom we contract directly to place patent markings? Or would a failure to record only prevent the patentee from enforcing a requirement that third-party sublicensees or manufacturers place the patent marking?

Answer: If the patentee does not produce a product, although there is no court precedent, it is believed that Article 79 requires that a licensee put the patent marking on the product while a provision in a license agreement requiring a licensee to place the patent marking in Taiwan will help prove that a patentee is diligently following the law requirements.

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Question 76. What are the fees and formalities involved in recording a license agreement? What would be needed to complete the process and what is the ordinary time line?

Answer: For petitioning a license agreement recordal, our regular service including the disbursement and Official fees will generally be NT$10,000 and NT$2,000 respectively for a single application. We will discount from 20% to 80% depending on the necessitated procedures for further respective ones in a bundle of applications. So far as the licensing recordal of a patent is concerned, it will be necessary for us to submit the licensing document and the power of attorney executed by either party of the licensor and the licensee. After completing the required procedures, we might receive the Official Notice about 2-4 months to this effect.

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Question 77. Is it possible to simultaneously cause issued a patent and a utility model for the same invention in Taiwan or Mainland China?

Answer: The answer could be yes or no.  Specifically, if the applications for patent and utility model have the same claims, the answer is no but yes if having different claim.  That is, by causing the independent claims in the regular utility and the utility model mutually different, we could eventually get issued both of them without the necessity to make a choice between them.

In addition, it is easy for us to make them mutually different without departing from the protections desired by the applicant.  Specifically, in the regular utility, we generically recite the independent claims while in the utility model, we somehow specifically recite the independent claims, e.g. ones directed to the product versions the applicant is most likely to market immediately.  As such, since both of them enjoy the same priorities and are directed to different scopes, we could cause issued both of them without any problem.

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Question 78. Given that a US client wants to first file PCT, and then immediately files the regular Utility and Utility Model in China, can we use the same PCT application for both filings, and file a Preliminary Amendment in the Utility Model application that cancels the claims and substitute other claims? Or do we have to file 2 PCT applications V one with a claim set for the regular Utility case and one with a claim set for the Utility Model case? What need we take note in providing the certified copy?

Answer: It is preferred that we are provided with the certified copy along with the International Application so that we can provide it to the Chinese Patent Office upon national filing in order to save costs for possible belated submission, correspondence, response or explanations.

We need to follow the rule that a PCT application can only enter into the China phase for only one of regular utility and utility model cases.  Accordingly, if both regular utility and utility model are desired, two PCT applications will be required.  Nevertheless, following suggestions could be taken for considerations:

1. The client files a PCT and a US cases at the same time and have the Chinese regular utility and utility model respectively claim priorities from the PCT and US cases so as to save the ultimate costs;

2. The client files a PCT and one of Chinese regular utility and utility model cases at the same time and then enters into the national phase for the other one of Chinese regular utility and utility model based on the PCT; or

3. The client files a PCT, a Chinese regular utility and a utility model at the same time.

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Question 79. The patent marking article requires a patent holder in Taiwan to mark his products wherever possible with the appropriate Taiwan serial number. Does this requirement extend to those articles patented in Taiwan but sold outside of Taiwan? In other words, does a patent holder in Taiwan lose the ability to collect damages on infringement in Taiwan if the patent holder sells unmarked patented articles outside of Taiwan?

Answer: This Article is stipulated mainly for alerting an innocent person/entity who has not an intention to infringe the patented article.  Speaking otherwise, if the patent holder can prove the infringer knew or has known the article is patented, no matter whether the sold article or its package is marked with the patent number or sold in Taiwan or outside of Taiwan, he should be able to claim damages in Taiwan under the Patent Law.  We now sharply turn to your questions to develop as follows:

1. If the products are duly marked only for those to be sold in Taiwan but un-marked for those to be sold outside of Taiwan, there will be no problem since the patent holder could powerfully argue based on territorialism of the patent system;

2. If the products produced in Taiwan are to be exclusively sold outside of Taiwan, the patent holder could still derive its sound base on the same reason;

3. It might damage the stand of the patent holder if all products produced in Taiwan are unmarked, no matter what they are to be locally or internationally sold until the patent holder proves that the infringer has known to the existence of the patent since a few precedents pay less attention to this article.

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