Question 61. After it is apparent that the applicant is entitled to a patent, is a notice of allowance issued in the mail? If so, is it possible for amendments to be made after the mailing of the notice but before the payment of the issue fee? Is it possible for amendments to be made after the issue fee has been paid?

Answer: If it is apparent that the applicant is entitled to a patent, a notice of allowance will be issued. Thereafter, no more amendments could be made. After the patent is issued, only when there is any circumstance of 1. reduction of claim; 2. correction of erroneous matter; or 3. illustration of unclear statement, the amendment could be made.

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Question 62. How would you like an answering firm to indicate the claim amendments? With marked-up pages showing the changes or using replacement sheets?

Answer: It will be preferable for us to have the claim amendments with marked-up pages showing the changes.

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Question 63. What is the absolute novelty requirement under Taiwan patent practices?

Answer: If any activity that makes an invention public or published before the filing date, it will be no more possible to seek patented the application since it has lost the novelty.

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Question 64. What Taiwan requires when a Taiwan application (or patent) is 1) reassigned from one company to another; and 2) when a Taiwan application (or patent) is transferred from one U.S. law firm to another U.S. law firm?

Answer: 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 change recordal, 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 assignments/changes immediately before claiming the right(s) to avoid such problems.  It, however, will cost us about 3 or 6 months.

Further, according to the Article 11(2) of the Patent Law, a person having no domicile or place of business in the Republic of China shall appoint an agent to act on his behalf in connection with the patent application and patent-related matters.  As for the agent, it should be local patent attorney(s) or agent(s) rather than foreign law firm(s).  As such, it makes no difference for a Taiwan application or patent as to when and whether the Taiwan application has been/will be transferred from one US law firm to another US law firm.

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Question 65. Is there anything special in respect of wholesale activity?

Answer: Under to the Trademark practices here, the service "wholesale", which is different from the services "retail sales", is regarded as "a kind of method" for promoting/selling the products rather than "product services or goods" themselves so that such name should be designated such as "agency services for sporting goods, equipment, accessories and supplies; providing the management consultation for the above business and the related alliance."

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Question 66. Under Taiwan practices, whether a submission of original or a certified copy of assignment is required?

Answer: Article 4(2) of the Patent Enforcement Rule provides that "original or true copy could be substituted by a copy thereof if stated to be the same with the original or true copy by the party provided that the documentary copy being an invalidating evidence shall be proved to be the same with the original or true copy thereof" where a documentary copy being an invalidating evidence means a copy of an evidence used for invalidating (cancelling) a patent.

Although there is not any specific article in the Patent Enforcement Rule saying that signatures of the attorney of record in Taiwan and that of the party can be considered equivalent. Nevertheless, in Part I, Page 1-1-4 of the Patent Examination Guidelines, there are the following explanations:

      1. An assignment, power of attorney, contract, ID, etc... could be substituted by a copy thereof if stated by the party or an
         attorney thereof to be the same with the original or true copy thereof;
      2. The word 'stated' means that the document submitted by the applicant could not thoroughly convince the IPO but have
          aroused a weak belief that what is stated is true;
      3. Sometimes, 'state' could be made through affidavit or statement, if required by IPO.

Since we are the attorney of the party, from the above, we could know that Taiwan IPO accepts that what we state is equivalent to what the party is assumed to state. If from the assignment a client provides, it is clear that the assignment is to be used for many applications in many countries and has been duly notarized, we would like not to doubt its reality or truthfulness, we would like to believe that the client would definitely like to state what we had stated, and more importantly, we could not believe that a foreign firm would provide us with a false copy. Accordingly, we could make a relevant statement, if based on our not weak belief, which is certainly acceptable before the IPO.

Specifically, such procedure could be known as 'standard practice' in Taiwan IPO, and will not generate any kind of disadvantage in any kind of proceedings in the future since we are just following what the Patent Examination Guidelines require. Further, no adverse precedent has been generated in this respect in the court till now.

Such statement is not an independent form but is a clause of the standard transmittal form.

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