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Chapter Law Content

Title: Enforcement Rules of the Patent Act CH
Category: Ministry of Economic Affairs(經濟部)
Chapter 5 Patent Rights
Article 62
Where priority is claimed pursuant to Paragraph 1, Article 28 or Paragraph 1, Article 30 of the Act, the so-called “prior to the filing of application” in Subparagraph 3, Paragraph 1, Article 59 and Paragraph 1, Article 99 of the Act shall mean prior to the priority date.
Article 63
When requesting for recordation of patent right assignment, a request form shall be submitted by the assignor or the assignee and accompanied by deed of assignment or document(s) of proof with respect to the assignment.
When requesting for recordation of patent right succession due to amalgamation or acquisition of companies, the documents to be submitted in the preceding paragraph are document(s) of proof with respect to the amalgamation or acquisition.
Article 64
In requesting for recordation of patent right entrustment, a request form shall be submitted by the patentee or the trustee and accompanied by the following documents:
1.for recordation of trust, the deed of trust or document(s) of proof with respect to such entrustment agreement;
2.for deletion of trust recordation upon termination of the trust relation and the acquisition of the patent right by the settlor, the deed of trust or document(s) of proof with respect to such termination of the trust relation;
3.for recordation of attribution of trusted patent right upon termination of the trust relation and the acquisition of patent right by a third party, the deed of trust or document(s) of proof with respect to such trust attribution;
4.for alteration of other matters in the recordation of trust, document(s) of proof with respect to such alteration.
Article 65
In requesting for recordation of licensing of patent right, a request form shall be submitted by the patentee or the licensee and accompanied by the following documents:
1.for recordation of licensing, the license agreement or document(s) of proof with respect to such licensing;
2.for alteration of the recordation of licensing, document(s) of proof with respect to such alteration;
3.for deletion of licensing recordation, a letter consenting deletion of the licensing recordation issued by the licensee, a judgment of the court along with a certificate stating the judgment is final and binding, or documents which legally have the equivalent effect as a final and binding judgment of the court. However, where the license is terminated due to expiration of the licensed term, the above documents need not be submitted.
The license agreement or document(s) of proof referred to in Subparagraph 1 of the preceding paragraph shall specify the following items:
1. title or certificate number of the invention, utility model, or design patent; and
2. type, scope, locality and term of license.
Where the patentee licenses others to exploit part of the claims, the scope referred to in Subparagraph 2 of the preceding paragraph shall specify the number(s) of the licensed claim(s).
The expiration date of the licensed term referred to in Subparagraph 2 of Paragraph 2 shall not be later than the expiration date of the patent term.
Article 66
In requesting for recordation of sub-licensing of patent right, a request shall be submitted by the licensee or the sub-licensee and accompanied by the following documents:
1.for recordation of sub-licensing, the sub-license contract or document(s) of proof with respect to such sub-licensing;
2.for alteration of the recordation of sub-licensing, document(s) of proof with respect to such alteration;
3.for deletion of sub-licensing recordation, a letter consenting deletion of the sub-licensing recordation issued by the sub-licensee, a judgment of the court along with a certificate stating the judgment is final and binding, or documents which legally have the equivalent effect as a final and binding judgment of the court. However, where the sub-license is terminated due to expiration of the licensed term or sub-licensed term, the above documents need not be submitted.
Paragraph 2 of the preceding Rule shall apply mutatis mutandis to the items to be specified in the sub-license contract or the document(s) of proof thereof referred to in Subparagraph 1 of the preceding paragraph.
The sub-licensed scope is limited to the original licensed scope.
Article 67
In requesting for recordation of pledge establishment of a patent right, a request form shall be submitted by the patentee or the pledgee and accompanied by the following documents:
1.for recordation of pledge establishment, the pledge agreement or document(s) of proof with respect to such establishment;
2.for alteration of the recordation of pledge establishment, document(s) of proof with respect to such alteration;
3.for cancelation of pledge establishment recordation, document(s) of proof with respect to the full discharge of pledged liabilities, document(s) to prove that the pledgee consented to cancel the recordation of the establishment of a pledge, a judgment of the court along with a certificate stating the judgment is final and binding, or documents which legally have the equivalent effect as a final and binding judgment of the court.
The agreement or document(s) of proof referred to in Subparagraph 1 of the preceding paragraph shall specify the following items:
1.title or certificate number of the invention, utility model, or design patent; and
2.amount of claim and the term of the pledge establishment.
The expiration date of the term of the pledge establishment referred to in Subparagraph 2 of the preceding paragraph shall not be later than the expiration date of the patent term.
Article 68
Where, pursuant to the laws, consent from a third party is required for recordation referred to in the preceding five (5) rules, document(s) of proof with respect to such consent from the third party shall also be submitted.
Article 69
In requesting for recordation of succession of patent right, a request form shall be submitted and accompanied by the certificate of death and the instrument of succession.
Article 70
When requesting for amending the post-grant description, claim(s), or drawing(s) of a patent pursuant to Article 67 of the Act, a request form shall be submitted and accompanied by the following documents:
1.the replacement sheet(s) of the description and drawing(s) after the post-grant amendment without marks;
2.where a post-grant amendment is made to the claim(s), a complete set of the claims;
3.where consent from the licensee, pledgee, or all joint owners is required pursuant to Article 69 of the Act, document(s) of proof with respect to such consent.
The request form referred to in the preceding paragraph shall specify the following items:
1.where a post-grant amendment is made to the description, the page number(s), paragraph number(s), line number(s) thereof, the contents amended, and reasons for the post-grant amendment;
2.where a post-grant amendment is made to the claim(s), the claim(s) thereof, the contents amended, and reasons for the post-grant amendment;
3.where a post-grant amendment is made to the drawing(s), the designation(s) thereof and reasons for the post-grant amendment.
The contents amended before and after the post-grant amendment shall be specified; the deleted original disclosure shall be indicated by a strikethrough of the deleted text(s); the added disclosure shall be indicated by underlining the added text(s).
The reasons for post-grant amendment referred to in Paragraph 2 shall specify the applied provision(s) of Paragraph 1, Article 67 of the Act.
Where a post-grant amendment is made to the claim(s), if parts of the claims are deleted, the claim sequence of the remaining claim(s) shall not be changed; where a post-grant amendment is made to the drawing(s), if parts of the drawing(s) are deleted, the drawing designation(s) of remaining drawing(s) shall not be changed.
When requesting for a post-grant amendment during invalidation proceedings, the patentee shall specify the number of invalidation action in the request form.
Article 71
Where an invalidation action is initiated after the patent has become extinguished ipso facto pursuant to Article 72 of the Act, the document(s) evidencing recoverable legal interests as a result of revocation of the patent right shall be submitted.
Article 72
Where an invalidation action is initiated, for an invention or a utility model, the invalidation statement prescribed under Paragraph 1, Article 73 of the Act shall state the objective to revoke all or parts of the claims; where an invalidation action is initiated against parts of the claims, the claim(s) against which the invalidation action is initiated shall be specifically identified; for a design, the invalidation statement shall state the objective to revoke the patent right of the design.
The reasons of invalidation prescribed under Paragraph 1, Article 73 of the Act shall state the ground(s) asserted by the invalidation action and specific facts, as well as explain the relationship between the respective specific facts and the evidence.
Article 73
The invalidation proceedings and decisions concerned shall be conducted within the scope of the invalidation statement.
The syllabus of the invalidation decision shall specify the examination results; for an invention or a utility model, such results shall be rendered on a claim-by-claim basis.
Article 74
When an invalidation action and a request for post-grant amendment are to be consolidated for examination pursuant to Paragraph 1, Article 77 of the Act, the post-grant amendment shall be first examined; if the post-grant amendment is rejected after examination, the Specific Patent Agency shall notify the patentee to make a response within a specified time limit; in case of failure to respond within the specified time limit or the post-grant amendment shall still be rejected despite the response, the Specific Patent Agency may proceed with the examination based on the materials available.
When an invalidation action and a request for post-grant amendment are to be consolidated for examination pursuant to Paragraph 1, Article 77 of the Act, the syllabus of the invalidation decision shall specify the examination results for the post-grant amendment and the invalidation action separately. However, where the post-grant amendment is rejected after examination, such rejection shall only be stated in the reasons of invalidation decision.
Article 75
When more than one invalidation actions are to be consolidated for examination pursuant to Paragraph 1, Article 78 of the Act, the Specific Patent Agency shall notify the respective invalidation requesters and the patentee of the reasons and evidence on which the respective invalidation actions rely.
The invalidation requesters and the patentee may each submit their comments or a response with respect to the reasons and evidence on which the respective invalidation actions rely within a time limit specified by the Specific Patent Agency.
Article 76
During the examination of an invalidation action, the Specific Patent Agency may, when necessary, consult with the invalidation requester and the patentee to formulate an examination plan.
Article 77
When requesting for a compulsory license, a request form specifying the reasons for the request thereof shall be submitted and accompanied by a detailed project for exploitation and relevant document(s) of proof.
When requesting for repeal of a compulsory license, a request form specifying the ground(s) for the repeal thereof shall be submitted and accompanied by the document(s) of proof.
Article 78
Where, pursuant to Paragraph 2, Article 88 of the Act, the exploitation under compulsory licensing shall be authorized predominantly for the supply of the domestic market, the Specific Patent Agency shall, in the decision approving compulsory licensing, specify that the following items be disclosed by the licensee in an appropriate manner:
1. information on the exploitation of the compulsory license; and
2. the quantity and flow of products manufactured.
Article 79
Marking of a patent certificate number prescribed under Article 98 of the Act shall not be made after the patent is extinguished or its revocation becomes final and binding, unless a patent certificate number has been marked on the patented article and the patented article has been circulated into the market before the patent is extinguished or its revocation becomes final and binding.
Article 80
The patentee may file an application form for the replacement or re-issuance of a patent certificate containing a written statement clarifying the reason(s) that exists under any of the following circumstances:
1.the patent certificate is destroyed or lost;
2.the patent certificate is outmoded or damaged;
3.changes to the particulars entered therein are to be updated.
Where a patent certificate is replaced or re-issued pursuant to the preceding paragraph, the nullification of the original patent certificate shall be published in the Patent Gazette.
Article 81
When requesting for a post-grant amendment to the description or drawing(s) pursuant to Article 139 of the Act, a request form shall be submitted and accompanied by a complete set of description or drawing(s) after the post-grant amendment without marks.
The request form referred to in the preceding paragraph shall specify the following items:
1.where a post-grant amendment is made to the description, the page number(s), line number(s) thereof, the contents amended and reasons for the post-grant amendment;
2.where a post-grant amendment is made to the drawing(s), the title(s) thereof and reasons for the post-grant amendment.
The contents amended before and after the post-grant amendment shall be specified; the deleted original disclosure shall be indicated by a strikethrough of the deleted text(s); the added disclosure shall be indicated by underlining the added text(s).
The reasons for post-grant amendment referred to in Paragraph 2 shall specify the applied provision(s) of Paragraph 1, Article 139 of the Act.
When requesting for a post-grant amendment during invalidation proceedings, the patentee shall specify the number of invalidation action in the request form.
Article 82
The Patent Registry shall specify the following information:
1. title of invention, utility model or design;
2. patent term;
3. name, nationality, and domicile/residence or business establishment of the patentee;
4. name and business establishment of the agent, if an agent is designated;
5. filing date and application number;
6. where the priority prescribed under Paragraph 1, Article 28 of the Act is claimed, the reciprocal country or the WTO member receiving the respective first patent application(s), application number(s) and filing date(s) thereof;
7. where the priority prescribed under Paragraph 1, Article 30 of the Act is claimed, the respective application number(s) and filing date(s) thereof;
8. publication date and patent certificate number;
9. name of the assignee or successor, and the date of recordation of patent assignment or inheritance;
10. name of the settlor or trustee, and the date of recordation of entrustment, deletion, or attribution of trust;
11. name of the licensee and date of recordation of license;
12. name of the pledgee and date of recordation of pledge establishment, alteration, or deletion of pledge;
13. name, nationality, and domicile/residence or business establishment of the compulsory licensee, and the date of approval or repeal of a compulsory license;
14. cause(s) and date of issuance of replacement of patent certificate;
15. extension or prolongation of patent term and the date of approval;
16. cause(s) and date of the extinguishment or revocation of a patent; for an invention or a utility model patent, where parts of the claims are deleted or revoked, the number(s) of such parts of claims shall be specified;
17. name of the depository, date of deposit, and depository number; and
18. any other matters with respect to the patent or prescribed by laws.
Article 83
Whenever a patent is published by the Specific Patent Agency, the following items shall be listed in the Patent Gazette:
1. patent certificate number;
2. publication date;
3. laying open number and laying open date for an invention patent;
4. international patent classification or the international classification for industrial designs;
5. filing date;
6. application number;
7. title of invention, utility model or design;
8. name(s) of the inventor(s) of the invention, the creator(s) of the utility model or the designer(s) of the design;
9. name and domicile/residence or business establishment of the applicant;
10. name of the agent, if an agent is designated;
11. claim(s) and drawing(s) of the invention patent or the utility model patent; drawing(s) of the design patent;
12. brief description of drawing(s) or description of design;
13. where the priority prescribed under Paragraph 1, Article 28 of the Act is claimed, the reciprocal country or the WTO member receiving the respective first patent application(s), application number(s) and filing date(s) thereof;
14. where the priority prescribed under Paragraph 1, Article 30 of the Act is claimed, the respective application number(s) and filing date(s) thereof; and
15. for an invention involving a biological material or utilization of a biological material, name of the depository, the deposit date and the deposit number; and
16. the declaration that a patent application for invention in respect of the same creation is filed by the same person on the same date.
Article 84
Whenever a request for a post-grant amendment is approved by the Specific Patent Agency, the following items shall be published in the Patent Gazette:
1. patent certificate number;
2. publication date of the patent;
3. application number;
4. title of invention, utility model or design;
5. name of the patentee; and
6. amended contents.
Article 85
Whenever an invalidation decision is rendered by the Specific Patent Agency, the following items shall be published in the Patent Gazette:
1. number of invalidation action;
2. title of invention, utility model or design;
3. name and domicile/residence or business establishment of the patentee;
4. name of the invalidation requester;
5. name of the agent, if an agent is designated;
6. date of filing of the invalidation action;
7. syllabus of the decision; and
8. reasons of the decision.
Article 86
Where the applicant has a need to postpone the publication of a patent, he or she may apply to the Specific Patent Agency for the postponement thereof at the time of paying the patent certificate fee and the first year patent annuity fee. The requested term of postponement shall not exceed a period of six (6) months.