Taiwan’s patent system is governed by the Patent Act and comprises three categories: inventions, utility models, and designs. The Ministry of Economic Affairs (MOEA) of the Republic of China oversees the system, while the Taiwan Intellectual Property Office (TIPO) is responsible for its actual administration.Since Taiwan is not a member of the PCT (Patent Cooperation Treaty), the inability to file a domestic application via the PCT is the most critical point to note when planning international applications. This article systematically outlines the requirements for filing, the examination process, key deadlines, official fees, invalidation proceedings, infringement litigation, and special provisions for foreign applicants from the perspective of a patent attorney’s practice.
Table of Contents
The core of Taiwan’s patent system is the Patent Act, and the competent authority is the Ministry of Economic Affairs (MOEA) of the Republic of China. Patent affairs are administered by the Taiwan Intellectual Property Office (TIPO), which has been designated as the “patent authority.”From a judicial and quasi-judicial perspective, remedies against administrative decisions (rejections, invalidations, corrections, etc.) proceed from administrative appeals (such as appeals) to administrative litigation, with the Intellectual Property and Commercial Court (first instance) and the Supreme Administrative Court (higher instance) serving as specialized intellectual property courts.
| Category | Agency | Primary Role |
|---|---|---|
| Competent Authority | MOEA (Ministry of Economic Affairs) | The government agency responsible for the patent system; designation of the patent authority |
| Designated Patent Authority | TIPO (Taiwan Intellectual Property Office) | Receipt of applications, formal and substantive examination, reexamination, invalidation proceedings, amendment proceedings, and publication of registrations |
| Administrative Remedies (Appeals) | MOEA (Appeals, etc.) | Administrative appeal stage against TIPO administrative decisions |
| Administrative Litigation (First Instance) | Intellectual Property and Commercial Court | Judicial Review of Administrative Dispositions |
| Administrative Litigation (Appellate Level) | Supreme Administrative Court | Appeal |
| Civil Remedies | Intellectual Property and Commercial Court | Infringement Litigation (Injunctions, Damages, etc.) |
| Border Control Measures | Customs (Taiwan Customs) | Detention, Notification, and Release of Suspected Infringing Imports |
The Taiwan Patent Act defines three types of intellectual property: inventions, utility models, and designs. Since the examination procedures, term of protection, and barriers to enforcement differ for each type, selecting the appropriate category based on the characteristics of the case is the starting point of any strategy.
| Topic | Invention Patents | Utility Model | Design |
|---|---|---|---|
| Subject Matter | Technical Concept (Utilization of Natural Laws) | Shape, structure, etc., of an article | Shape, pattern, color, etc., of an article (including GUI/icons) |
| Examination Procedure | Substantive Examination (initiated upon request) | Formality examination only | Substantive examination + re-examination (upon rejection) |
| Publication | Publication generally within 18 months (early publication may be requested) | Registration and Publication (in the Official Gazette) | Registration and publication (in the Official Gazette) |
| Term of Protection | 20 years from the filing date | 10 years from the filing date | 15 years from the filing date (derivative designs expire simultaneously with the original design) |
| Enforcement of Rights | Standard proof of infringement (claim-based) | Presentation of a technical evaluation report is mandatory upon issuance of a cease-and-desist notice | Focus on drawings (description is for reference) |
| Expedited proceedings | AEP, etc. (subject to conditions) | (Expedited due to formal examination) | Operated by TIPO |
Practical Considerations for Utility Models Note: While utility models are registered based solely on formal examination, obtaining and presenting a technical evaluation report is mandatory before exercising rights. If a warning is issued without such a report, you may be liable for damages due to subsequent invalidation (though there is room for exemption if due care was exercised). You must document the acquisition of the report prior to issuing warnings or filing lawsuits.
An invention is defined as “a creation of a technical concept utilizing natural laws” and must satisfy industrial applicability, novelty (publication, public use, or public knowledge), and inventive step (obviousness to a person skilled in the art). On the other hand, the following are excluded from patentability:
Exclusions from Patentability (Art. 24):
① Plants and animals, and essentially biological production methods (microbial production processes are an exception)
② Methods for the
diagnosis, treatment, or surgery of the human body or animals ③ Violations of public order and morality
Additionally, there are provisions equivalent to the prior application effect (Art. 23), whereby a prior application (another person’s invention) negates the novelty of a subsequent application; anything described in the specification of a valid prior application or patent and subsequently published may bar the subsequent application (with exceptions such as where the applicants are the same).
| Categories | Grace Period | Scope |
|---|---|---|
| Inventions and Utility Models | 12 months prior to the effective date | Self-disclosure or disclosure against one’s will |
| Design | 6 months prior to the effective date | Same as above |
However, this does not apply to disclosures made voluntarily in official gazette publications accompanying the application. Self-disclosures such as academic presentations, exhibitions, and sales are items that should be managed with the highest priority when designing the timeline for a Taiwan application.
For inventions and designs, if you submit the specification, claims, and drawings in a foreign language rather than Chinese at the time of filing, and submit a Chinese translation within the period designated by TIPO, you can retain the foreign language filing date as the application date. Failure to submit the translation within the designated period may result in rejection; however, if submitted before the rejection decision is served, the submission date becomes the application date, and the foreign language version is treated as if it had not been submitted.
The Critical Risk of Translation Errors: The original foreign-language text cannot be amended later, and the Chinese translation must not exceed the scope of disclosure in the original text. Corrections of translation errors are also limited to the scope of the original text. Under TIPO examination guidelines, the Chinese translation (Chinese text) serves as the “statutory examination text” and forms the basis for determining whether amendments or corrections constitute new matters or expansions; however, corrections of translation errors are examined by comparing them with the original foreign-language text.It is essential to establish protocols for terminology standardization and translation review.
According to statistics published by TIPO for 2024, the average time to first Office Action for inventions was 8.4 months, and the average processing time was 14.2 months, which serves as a benchmark for standard examination.
| Stage | Deadline | Practical Implications | Basis |
|---|---|---|---|
| Priority (Invention/Utility Model) | 12 months from the earliest filing date | Securing Paris Convention priority (WTO/reciprocity) | Art. 28 |
| Submission of Certificate of Priority (Invention) | 16 months from the earliest priority date | Priority not claimed due to failure to submit, etc. | Art. 29 |
| Restoration of Priority | 16 months from the earliest priority date | Remedy for inadvertent failure to claim (fee required) | Art. 29 |
| Priority (Design) | 6 months | Designs have a short term | Art. 142 applied mutatis mutandis |
| Certificate of Priority (Design) | 10 months | Deadline for Submission of Design Proof | Applicable mutatis mutandis under Art. 142 |
| Publication of Invention | Generally 18 months (based on the priority date if priority is claimed) | Claims for compensation may arise after publication | Art. 37, 41 |
| Request for substantive examination of the invention | Within 3 years from the filing date | Lapse of the deadline = deemed withdrawal | Art. 38 |
| Rejection → Request for reexamination | Within 2 months after delivery of the notice of refusal | Re-evaluation due to examiner change + window for amendments | Art. 48–50 |
| Patent Grant → Registration (Invention) | 3 months after delivery of the grant decision | If fees are unpaid, the application will not be published | Art. 52 |
| Payment of overdue annuities | Within 6 months after the original due date of each year | Retroactive payment may maintain eligibility (with late payment penalties) | Art. 94 |
| Pension Reinstatement | Within one year after the expiration of the retroactive payment period | Restoration from loss of entitlement by paying three times the amount | Art. 70 |
| Submission of Reasons for Invalidity and Evidence | Within 3 months after filing for invalidation | No consideration if deadline is missed | Art. 73 |
| Right Holder’s Response to Invalidity Proceedings | Generally 1 month | Directly linked to the opportunity for correction (time-limited) | Art. 74 |
The following are TIPO’s official government fees. Attorney fees, translation fees, and expert witness fees are separate. Amounts are based on the Patent Fee Regulations (NT$).
| Procedure | Inventions | Utility Model | Design |
|---|---|---|---|
| Patent Certificate Fee | 1,000 | 1,000 | 1,000 |
| Annuity (Years 1–3) | 2,500/year | 2,500/year | 800/year |
| Pension (4–6 years) | 5,000/year | 4,000/year | 2,000/year |
| Pension (7–9 years) | 8,000/year | 8,000/year (7 years or more) | 3,000/year (7 years or more) |
| Pension (10 years or more) | 16,000/year | — | — |
| Invalidity Trial Petition (Design) | — | — | 8,000 |
| Request for reexamination (design) | — | — | 3,500 |
| Utility Model Technical Evaluation Report (up to 10 claims) | — | 5,000 | — |
| Technical Evaluation Report (per claim exceeding 10) | — | 600 | — |
| Transfer and License Registration | 2,000 | 2,000 | 2,000 |
Long-Term Portfolio Cost Design: Since patent annuities increase in a step-like manner—reaching 16,000 per year after 10 years—it is reasonable to evaluate renewal decisions based on ROI assessments for each patent family. Design patent annuities are low at 3,000 per year after 7 years, making it easier to consider a strategy of “broad maintenance” for the protection portfolio.
In Taiwan, unlike Japan, there is no independent “opposition stage” in the standard procedure; third-party challenges are consolidated into the TIPO invalidation proceedings → administrative remedies → administrative litigation. Anyone (any person) may file an invalidation petition with TIPO, based on statutory grounds for invalidity (lack of patentability, violation of specification requirements, lack of applicant eligibility, etc.).
Fixed Rules for Statements: Once filed, the statement of grounds for invalidation cannot be added to or modified (only narrowing is permitted). Although grounds and evidence may be supplemented within three months of filing, failure to meet this deadline results in the case being dismissed, so the evidentiary strategy at the time of filing determines the outcome. The patent holder must generally file a response within one month.
Post-grant amendments are permitted only under limited circumstances, such as “at the time of filing a response,” and are restricted to “deletion or narrowing of claims, correction of clerical errors or mistranslations, and clarification.” Except for corrections of mistranslations, amendments must not go beyond the disclosure at the time of filing, and substantial expansion or alteration of published claims is prohibited.If invalidity proceedings and amendments proceed concurrently, TIPO will consolidate the proceedings and render a simultaneous decision. Upon final determination of invalidity, the patent right is deemed to have “never existed from the outset.”
A request for reexamination may be filed within two months of service of a rejection decision, stating the grounds for the request, and the reexamination will be handled by an examiner who was not involved in the original examination. In cases where the request is not accepted or is dismissed due to formal deficiencies, the law provides for proceeding “directly” to administrative remedies rather than reexamination; therefore, a strategic decision regarding the choice of remedy (reexamination vs. direct administrative remedy) is necessary in parallel with addressing the grounds for rejection.
In cases of infringement (or the threat thereof), the patent holder may seek an injunction or preventive relief; if there is willful or negligent infringement, the holder may also claim damages and the destruction or removal of the infringing products. Three methods are available for calculating damages:
Calculation of Damages (Art. 97):
(
1) Difference in the right holder’s profits; (
2) Infringer’s profits; (3) Amount equivalent to a reasonable royalty. In cases of
willful infringement
, the court may increase the damages up to three times the actual amount
(serving a punitive function). The statute of limitations is two years from the time the right holder becomes aware of the damage and the liable party, or ten years from the date of infringement.
A patent holder may request customs to detain imports suspected of infringement. If an infringement lawsuit is not filed within 12 days (extendable by 12 days if necessary) after customs accepts the request, the detention will be lifted; therefore, it is necessary to simultaneously prepare the prima facie evidence and security required at the time of filing, as well as preparations for prompt litigation (determining jurisdiction, identifying the defendant, and preserving evidence).
Key Point: Taiwan
is not
a member of the PCT
It is not possible to “enter the national phase” in Taiwan via a PCT international application. Therefore, even when using the PCT, the strategy for obtaining rights in Taiwan must be designed through a direct application to Taiwan (plus priority)
. Specifically, it is necessary to plan in advance a schedule to file
a direct application in Taiwan within 12 months
using the PCT filing date (or its priority date) as the priority date.
Due to this system design, the benefits of the PCT (postponing the decision to enter the national phase for up to 30 months) cannot be enjoyed in Taiwan. Consequently, for multi-country applications, the “Taiwan route” must be evaluated separately within the 12-month Paris Convention priority period, resulting in a budget and decision-making timeline that is distinct from the Japan, U.S., and European routes.
Two requirements for foreign applications:
① Reciprocity: Foreign
applications will not be accepted if treaties, agreements, or mutual protection provisions are not satisfied.
② Mandatory representation: Applicants without an address or place of business within Taiwan are required to appoint a Taiwanese patent attorney.
These requirements should be incorporated into pre-filing KYC checks (verification of client attributes, nationality, and residence; preparation of power of attorney, name, and address). For Japanese companies, since mutual protection between Japan and Taiwan is secured, the acceptance requirements are typically met, but the appointment of an agent is mandatory.
Pre-filing Phase
☑ Confirm planned public disclosure (academic conferences, exhibitions, sales) and eligibility for grace period (12 months for inventions / 6 months for designs)
☑ Prior application and prior art search (including the effect of prior applications under Art. 23)
☑ Confirm requirements for foreign applicants (
reciprocity and mandatory representation) ☑ Plan
for “direct filing within 12 months of Paris priority” assuming non-PCT membership ☑ Select the type of application (invention, utility model, or design) (considering term of protection, examination method, and enforcement requirements)
Filing to Examination Phase
☑ If submitting foreign-language documents, establish a translation policy (terminology
standardization) and a protocol for correcting mistranslations ☑ Priority: Simultaneously include priority declarations and manage
submission deadlines for priority documents (16 months / 10 months for designs)☑ Incorporate requests for substantive
examination of inventions (within 3 years) into portfolio strategy☑ Response to Office Actions: Build rebuttals in three layers
: statutory provisions → application of examination guidelines → supporting evidence☑ After a rejection, file a request for re-examination within 2 months + evaluate the feasibility of amendments
Grant to Maintenance
Phase
☑ Pay certificate fee within 3 months after examination decision + pay first-year annuity(Inventions)
☑ Long-term cost estimates
incorporating the annuity structure (especially the 16,000 yen/year starting from the 10th year) ☑ For utility models, issue warnings
or file lawsuits only after obtaining a technical evaluation report ☑ Licensing: Include provisions in contracts regarding exclusive/non-exclusive licenses, sublicensing, responses
to amendments and invalidation actions, and the necessity of registration ☑ Secure third-party enforceability for transfers and implementation rights through TIPO registration (recordation)
Litigation Phase
☑ Since amendments during invalidity proceedings are limited in “timing and type,” plan
them concurrently with the response ☑ Complete the supplementation of grounds for
invalidity and evidence within three months of filing ☑ Early-stage strategy: Prepare for filing a lawsuit within 12 days simultaneously with a motion for retention (identify the defendant and preserve evidence)
☑ Compare the three methods for calculating damages (right
holder’s profits / infringer’s profits / reasonable royalty) ☑ Consider the potential for claiming triple damages for willful infringement at the initial stage
While Taiwan’s patent system has a clear framework—comprising three categories (inventions, utility models, and designs), centralized examination by TIPO, and judicial review by the Intellectual Property Court—it is essential to incorporate the unique practical reality that Taiwan is not a member of the PCT into your strategy.
First, since the PCT route cannot be used, the strategy for obtaining rights in Taiwan should be designed around direct filing within 12 months of Paris Convention priority. When allocating schedules and budgets for multi-country cases, internally communicating the premise that “only Taiwan has no 30-month grace period” is the first step in preventing loss of rights.
Second, managing foreign-language applications and the risk of translation errors is central to quality control. While the Chinese translation serves as the statutory examination text, corrections to translation errors are constrained by the original foreign-language text; therefore, establishing protocols for terminology standardization and translation scrutiny ensures flexibility in amendments and corrections.
Third, given the fixed statement rules for invalidity trials, it is necessary to preemptively devise a plan of evidence for filing an invalidity action and a strategy for supplementing the application within three months. For the rights holder, designing amendments concurrently with the response (limiting timing and scope) is key to defense.
Fourth, the core of practical arrangements that differ from those in Japan, the U.S., and Europe lies in institutionalizing “Taiwan-specific operational constraints” at every stage of application and enforcement. These include the fact that utility models cannot be enforced without a technical evaluation report, that foreign applicants are required to appoint an agent, and that “border measures” require filing within a short 12-day period.
Securing and enforcing Taiwanese patent rights requires a practical approach based on the interplay between the Patent Act, TIPO examination guidelines, and the case law of the Intellectual Property and Commercial Court. We recommend that Japanese patent attorneys and Taiwanese agents collaborate to examine category selection, deadline management, and litigation strategies on a case-by-case basis.
Contact Evolix for consultations on Taiwan patent applications
From direct filings in Taiwan to TIPO invalidation proceedings and litigation before the Intellectual Property and Commercial Court, our patent attorneys will propose a Taiwan IP strategy aligned with your company’s business strategy.