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by Jeffrey Chang, NAIP Editorial

On 29 July 2010, amid much political support, political protest and media frenzy over the signing of the Economic Cooperation Framework Agreement, Taiwan and China officials also quietly signed the "Cross-Strait Agreement on Intellectual Property Rights Protection and Cooperation" (IPR Agreement). Over the past decade, as economic relations between Taiwan and China have increased, intellectual property (IP) has gained in prominence in both business and political discussions. Both sides have long spoken of addressing shortcomings in IP collaboration and the signing of the IPR Agreement sets important goals that both wish to accomplish. However, even a general guideline on how to proceed has yet to be produced and much remains to be discussed and determined.

Two Markets, Two Systems

Since the Nationalist party fled to Taiwan in 1949, IP has remained one of the many complicated and unresolved issues. Both Taiwan and China implement their own IP systems. Both administer their own patents. Both are important participants in the global IP industry. However, neither acknowledges the validity of each other's patents. This means a Taiwan patent cannot be enforced in China—and vice versa. Most significantly, priority rights are not recognized. Copyrights, trademarks and plant variety rights also face similar issues, with added complications including copyright authentication and interpretation over well-known places names or well-known brands.

A Framework Agreement

The IPR agreement has been touted as a "framework" for future collaboration between Taiwan and China. The purpose, goals, benefits and subjects covered in the agreement can be found in the TIPO press release here. Briefly, the agreement aims for:

  1. Mutual recognition of priority rights for patents, trademarks and plant varieties.
  2. Establishment of mechanism to combat illegal IPR activities.
  3. Establishment of a formal communication platform.
  4. Copyright authentication service based in Taiwan (currently being done in HK).
  5. Search and examination results-sharing

Overall, the agreement touches upon a broad and wide range of IP areas from improving protection to increasing opportunities for economic development. In addition, many goals—such as copyright, trademark or even patent "squatting"—were written directly to address concerns of IP holders in Taiwan. Both sides have planned ambitiously, which is in line with the current Taiwan government's view that China is an integral part of Taiwan's economic future.

Collecting Public Opinion

After signing of the IPR agreement, the Taiwan Intellectual Property Office (TIPO), together with the Chinese National Federation of Industries, hosted a symposium to hear the thoughts, opinions and suggestions of the Taiwan Public. The two-day event, from 14-15 of July, was split into four discussions, covering:

  1. Trademark & Geographic Indicators
  2. Copyrights
  3. Patents, Technology Transfers & Trade Secrets
  4. Prevention of Piracy and Counterfeiting

At each event key members of both TIPO and China's State Intellectual Property Office (SIPO) were on hand to briefly explain the IPR agreement and listen to participants' opinions, suggestions and concerns. Although no decisions were made on how to proceed with the goals stated, the discussions provided an excellent window into the attitudes, frustrations and expectations of Taiwanese organizations dealing with IP in China. Many shared stories about difficulties encountered with applying for IP rights, enforcement, and dealing with the substantial experience gap between two patent offices. Overall, the symposium was a valuable source of experience sharing and learning about the successes and failures in dealing with IP in China.

First Steps on a Long Journey

Although much remains to be done, Taiwan has already begun with minor, but significant adjustments to its IP laws. On 17 October 2010, amendments to Patent Law (Article 27 and 28), Trademark Law (Article 4), and Plant Variety Act (Article 17) were passed that would allow recognition of China patent priority rights. Previously the wording of the laws required the applicant supply documents and proof issued from a reciprocating "country". To circumvent the political mutual non-recognition issue, the wording was changed to allow documents and proof issued from "a member of the World Trade Organization".

The next steps, unfortunately, will not be so easily taken. Beyond a general working guideline and schedule, the goals must be reviewed with more specific details in mind—for example, transitional arrangements, cooperation or conflicts with international standards, litigation procedures and many, many more. These topics must be discussed and agreed upon by both sides as well, ensuring that the journey ahead is not just a long one, but also one that is full of complications.


Novelty Grace Periods in Taiwan

by Jason Wang, NAIP Patent Engineering Research

In Taiwan, a patentable invention must satisfy three conditions: utility, novelty, and inventive step. Generally speaking, if an invention is known to the public before filing, it loses its novelty. However, under certain conditions, if the disclosure was made by the applicant, he can claim a "novelty grace period" in which the invention is still considered novel and patentable.

A novelty grace period is the allowable time from the disclosure date of the invention to the filing date. It's a special rule that, under a certain conditions, prevents the disclosure of an invention prior to the application to be recognized as prior art during examination. Many people assume the grace period is for the benefit of the inventor, allowing him to disclose his/her invention before filing an application. However, reality is opposite, because of the high risk of losing "novelty" in most or even all the patent offices if something unexpected happens during the period of the disclosure to application. Therefore, to help fully explain the details, here we will explain the grace period rules in TIPO and the risks that an applicant faces.

In the Taiwan Patent Act, Article 22, paragraph 2 deals with grace periods, and states:

an invention may not be patentable if it has been published, put to public use, or known to the public before applying for patent, unless it is filed within 6 months from the date of occurrence of the following causes:

  1. Where the invention is disclosed as a result of research or experiment;
  2. Where the invention has been exhibited at an exhibition sponsored or approved by the government; or
  3. Where the invention has been disclosed in an occasion not intended by the patent applicant.

Of the three causes, subparagraphs 2 and 3 are well-defined (though proving accidental disclosure is another matter), so here we focus on the first condition, paragraph 1.

TIPO's patent examination guidelines goes into further detail about this condition:

If the content of the invention sought to be patented has been published, put to public use, or known to the public prior because of the purpose of research or experiment, for example, the publication of a thesis, the novelty of the invention is kept if the patent is filed within 6 months from the date of occurrence, which is the date that the content of the invention is available in public, not necessarily read or known."

From the example provided in the examination guidelines, we have a rough idea that something like thesis disclosures satisfies the condition set under Article 22, paragraph 2, subparagraph 1.

Most recently on 11 December 2009, a draft amendment of the Patent Act passed to the Legislative Yuan for examination, and may take effect in the near future. In Article 22, "research" was removed from the "disclosed as a result of research or experiment" (subparagraph 1) and a second paragraph, "disclosed via printed publication", was added. According to the explanation from TIPO, "research" is something incomplete and requiring further discussion or study. An incomplete invention is not a subject matter of a patent. Therefore, "research" should not be included in consideration. The phrase "disclosure via printed publication", provides a wider range of the conditions acceptable for grace period status.

In the previous paragraphs we defined grace period and described the acceptable conditions under TIPO's Patent Act. However, one important fact must be mentioned: unlike in the United States, a grace period does NOT determine the priority date of the patent. Although TIPO accepts the patent applications that disclosed prior to filing and meet conditions set in Article 22, paragraph 2, there are 3 major problems/risks caused by this process:

(1) If the applicant claims the benefit of a grace period under Article 22, paragraph 2, subparagraph 1, the invention may lose patentability in some patent offices. For example, China's State Intellectual Property Office (SIPO) allows the grace period only if the disclosure is in a national or an officially-recognized international exhibition, or in a national-level scientific seminar. In the Japan Patent Office (JPO), although a similar grace period clause exists, the recognition of "disclosed as a result of experiment" is different from TIPO. So the risk of losing patentability in other countries/regions is a major concern.

(2) If the applicant claims the benefit of grace period under Article 22, paragraph 2, subparagraph 2, the "exhibition" in which the invention was disclosed plays a key factor in its patentability. Unfortunately, currently no set definition of "officially recognized international exhibitions" exists. But for example, at the EPO, only the World Expo has been listed as a qualified event for 2010. Therefore, while you can still file a Taiwan patent after an invention exhibited in CeBIT or COMPUTEX, it has already lost its "novelty" for a European patent at the moment of exhibition.

(3) There is still a risk of non-patentability even if the invention is disclosed under the qualified conditions of Article 22, paragraph 2, subparagraphs 1 and 2. If another inventor files a patent or discloses his own invention (with subject matter which can be used as prior art against your invention), during the time between your disclosure and your application, that creates a "lose-lose" situation. The other inventor cannot receive a patent because your disclosure has made his invention "non-novel". Also under the "first to file" system, his application or disclosure also invalidated your application because the grace period only allows a prior art exception of your own disclosure. No one is able to receive a patent in this situation—unless you or he can prove that the other achieved the invention by through illegal means.

Let's take an example to explain the problem an applicant may have, if he/she does not completely understand the differences between grace period and priority. Assume that Jenny is the inventor of a special controller for the PlayStation 3. She disclosed the controller and how it works at the E3 game show, on 16 June, 2008. She filed her invention on 1 February 2009--within the 1-year grace period offered by the USPTO. On 16 February 2009, Jenny decides to authorize her good friend Huang to produce this controller in Taiwan, so she requests a patent firm to file a Taiwan patent and claim the priority from the US patent. Do you see the problem here? Although the first filing date of the invention was only half a month before her decision to file a Taiwan patent (which satisfies the regulation for the international priority claiming) 7 months have passed since disclosure of the invention to the date of decision to file a Taiwan patent. The application has no chance to meet the requirements for the grace period in Taiwan. In this case, the controller may not be patentable in all patent offices except the USPTO.

To summarize, a novelty grace period is a remedial measure for filing a patent if you have already disclosed your invention. But is an option nonetheless. However, please don't assume that this rule erases any and all disclosure, because in many countries the invention may still lose novelty. The best way to secure the novelty of your invention is still to first file the patent. Then you can claim priority of the first filing date of when applying in other countries. Just ask yourself before disclosing an invention: "Is it worth the risk of losing this patent?" I believe you will know what to do next.


by Daniel Gross, NAIP Patent Engineer

In the almost anticlimactic wake of the Supreme Court's decision on the Bilski vs Kappos case, there seems to be little general consensus in the IP community as to what is patentable. One camp happily believes that by throwing out the machine-or-transformation (MOT) test as being definitive, the Court has further embraced the apparent 1952 Congressional intent of patentability of "anything under the sun that is made by man". Another camp views the results differently, thinking that the Court was actually contracting current scope of the statute and in fact merely added that it is not inconceivable for some future innovation to fail the MOT test and still be patentable. The Court, unfortunately, gave no examples of such an invention.

With this kind of legal ambiguity over what is patentable, many IP attorneys are gleefully lining their pockets, while, in an age of multi-multi-million dollar infringement lawsuits, the industries are scrambling to fortify against that suddenly-larger expense in product development and ownership known as uncertainty. Without such a clear example of what is patentable, even the USPTO appears hesitant to stray far from the MOT test, but I think they may be missing the Court's ultimate point. The way I interpret the decision, things might be a mess right now, but the writing is on the wall. The Supreme Court is carefully but surely slamming the door on the patentability of most software and business method patents as we know them by suggesting that they always have been, and still should be rejected as abstract ideas. Having no definitive MOT test just makes rejecting these "inventions" much easier.

In the Bilski decision, the Court threw out another bright-line test only to widen the concept of abstract ideas. With Bilski being the first, the Court also gave us a second example of the widened concept shortly afterwards when they vacated the Federal Circuit Court's decision in another patent case. The Lower Court had ruled in Prometheus Laboratories, Inc. v. Mayo Collaborative Services (Fed. Cir. 2010) that the claimed medical procedure was statutory because a drug induced modification of a patient's blood chemistry met the transformation fork of the MOT test. However, the Supreme Court directed the Lower Court to reconsider the case in light of the Bilski decision, suggesting that even meeting the MOT test is not enough to make a method statutory.

Most software and business method patents seen today would have been considered unstatutory material before the Federal Circuit's 1998 State Street decision, the case usually considered as opening the door for business method patents. Although ruled narrowly on the facts, the Bilski decision specifically singled out this same State Street decision as not being endorsed. "Nothing in today's opinion should be read as endorsing the Federal Circuit's past interpretations of §101. See, e.g., State Street, 49 F. 3d, at 1373."

Thus while many believe that the Justices were giving their de facto blessing to business method and software patents, the Court was actually doing exactly the reverse, implying that they were abstract ideas. Before Bilski, if a method passed the MOT test, it was automatically statutory material. After Bilski, this no longer proves to be the case. Why is a paper copy of software code not patentable, yet running the exact same software code on a computer suddenly turn an old machine into a new patentable machine? The Justices are asking the same kind of questions. Similarly, business methods can also be viewed as simply algorithms that use old machines, such as computers, phones, or websites to pass the MOT test, but still be abstract ideas at their core.

At the end of the decision, the opinion also included this line:
"In disapproving an exclusive machine-or-transformation test, this Court by no means desires to preclude the Federal Circuit's development of other limiting criteria that further the Patent Act's purposes and are not inconsistent with its text.”
This is spoken by a Court that wishes to contract rather than expand the scope of §101.

In response to the prodding by the Supreme Court in this decision, the Lower Court may take a different approach to developing the requested "limiting criteria" for patent eligibility. Perhaps instead of tackling the difficult job of defining what is patentable without running afoul of the law, it would be easier for the Lower Court to use what has already been long settled as statutory limits and merely define certain classes of subject material as "abstract ideas". To be sure, there would be countless court battles over whether a specific process falls into one of those classes, but there is no statutory problem with rejection of abstract ideas.

Defining classes of ideas as "abstract" could be relatively easy. For software: that which does not cause a "further technical effect" and which does not go beyond the inherent technical interactions between hardware and software. Similarly, for any process or method: that which does not cause a "further technical effect" and which does not go beyond the inherent technical interactions between the process and a machine. This basically is how Europe does it and universal symmetry of patent eligibility may go a long way toward easing some of the uncertainties of product development and ownership so prevalent today.

Unfortunately, US patent law lacks a specific "technical effect" requirement like that which is present in European patent law, so a "technical effect" requirement in the US might suffer the same fate as the MOT test (ruled as being inconsistent with the text of patent law). Nevertheless, the act of defining certain classes of ideas as abstract is not inconsistent with the Patent Act. It would merely be a generalization of historical interpretations of patentable subject matter and Supreme Court precedents such as Benson, Flook, and Diehr. In contrast, the recent push to expand patentability to software and business methods, however well intended, is in violation of the same historical precedents.

In the end, the key point is that the Supreme Court's rejection of Bilski's claims had nothing to do with the MOT test, and instead was specifically based on the rule that claims "can be rejected under the Court’s precedents on the unpatentability of abstract ideas". The Court even gave us a second example of the same rationale in the Prometheus case. The Lower Court was then basically challenged to find "limiting criteria" for patent eligibility. Again, the key point is "abstract ideas should be rejected".

While it is quite unlikely that the Congressional intent of patentability of "anything under the sun that is made by man" will be changed by this ruling, therein may be the solution. People "have" ideas, but "make" products--even digital ones. It may soon be up to applicants to prove that their software or business methods "made" something instead of being abstract ideas they "had" and then just written down or codified.


NAIP Launches New Newsletter - The IP Observer

NAIP, Taiwan's premier US and TW patent prosecution firms, is proud to announce the launch of a new English-language newsletter--The IP Observer.

With the release of the IP Observer, NAIP now releases IP newsletters in three languages--Traditional Chinese, Simplified Chinese, and English--all featuring original content and reports authored by NAIP's knowledge services departments.

The IP Observer, which will be released approximately 7-9 times per year, focuses on Intellectual Property Issues in Taiwan. In addition to original articles, each issue of the IP Observer includes reports on noteworthy patent office develops, as well as links to industry news on other media sites.

Check out the IP Observer here or to subscribe, click here.


Intellectual Property in Taiwan – An Overview

Jeffrey Chang, NAIP Editorial

Taiwan is among the most active and important countries in the global intellectual property (IP) industry. In major IP markets like the United States, Japan and Korea, Taiwan consistently ranks among the top five filers. And in 2009, organizations and inventors from around the world filed for nearly 80,000 patents at Taiwan's Intellectual Property Office (TIPO). Taiwan's "miraculous" economic growth and transition from small goods manufacturer to a knowledge-intensive, high tech industry leader has made it an integral IP market for many global organizations. As a result, here we provide a broad, (but not exhaustive) overview of IP in Taiwan—its history, patent fundamentals, key figures, statistics and more—to help these organizations and inventors understand more about this influential and growing market.

The origins of the Taiwan IP system can be traced back as early as 1911 China, with the establishment of "Handicrafts Incentives Provisional Regulations" (獎勵工藝品暫行章程) by the Ministry of Commerce & Industry. In 1940, looking to improve the existing laws into a more formal system, the Ministry of Economic Affairs researched the patent laws of ten foreign countries and, after four years of debate, discussion and revision, promulgated the first official patent law in 1944. The law was never fully instituted, however, as in 1949 the Nationalist government was forced to retreated to Taiwan.

In Taiwan, IP issues were managed by the National Bureau of Standards (NBS), and the offices were initially located in Tainan before moving to Taipei in 1972. After a series of major revisions to IP law in the early 1990s, the NBS was reorganized and renamed the Intellectual Property Office in 1999. Since the reorganization, the office has made great strides in expanding the scope and detail of IP laws and regulations, and in tandem with the economic growth of Taiwan, the Taiwan IP industry is now a mature and vital part of Taiwan's economy, covering Patents, Trademarks, Copyrights, Trade Secrets and Integrated Circuit Layouts.

Patent System Fundamentals
Much of Taiwan's patent system was drafted with consideration of foreign laws and policies, so the Taiwan system retains thematic similarities to patent systems around world. Taiwan runs a "First-to-File" system and any natural (living) person or entity may file for any of three types of patents:

Invention Patents

For "any creation of technical concepts by utilizing the rules of nature," (Taiwan Patent Act Article 21). The term of exclusivity is 20 years.

Utility Model Patents

For "any creation of technical concepts by utilizing the rules of nature, in respect of the form, construction or installation of an article," (Article 93). The term of exclusivity is 10 years.

Design Patents

For "any creation made in respect of the shape, pattern, color or combination thereof of an article through visual appeal," (Article109). The term of exclusivity is 12 years.

The major distinction between an Invention Patent and Utility Model Patent is in patentable subject matter. Invention Patent protection covers a wider range of subjects including devices, methods, substances and biological materials. The scope of protection offered by Utility Model Patents is limited to devices (including their shape, structure and installation).

The Taiwan Intellectual Property Office

The main governing body for IP-related issues is the Taiwan Intellectual Property Office (TIPO), an administrative agency of the Ministry of Economic Affairs. The Office is currently located in Taipei City near the venerated National Taiwan University, with branch offices in Taichung, Hsinchu and Kaohsiung.

The current Director General is Wang Meihua, who was appointed in December 2007. Wang graduated from National Taiwan Normal University in 1980, majoring in law, and has spent her entire 30 year career in the Ministry of Economic Affairs, 22 of which have been at the intellectual property office.

Patent Agents & Attorneys

In Taiwan, both Patent Agents (專利代理人) and Patent Attorneys (專利師) are authorized to file patent applications on behalf of companies and inventors. Please note that a Patent Attorney is not an attorney-at-law and may not file infringement suits or defend against one. The Patent Attorney Law was established in 2008 as a replacement for the prior Patent Agent standard. Taiwan currently has over 690 active registered Patent Agents and Attorneys.

Patent Statistics

Data From TIPO

For the past five years approximately 80,000 applications have been filed each year for Invention, Utility Model and Design Patents. Invention Patent applications account for 60% or ~50,000 applications, and have accounted for much of the overall application growth, which has been in step with growth in patent offices globally.

Data From TIPO

For Invention Patent applications, residents (i.e. Taiwanese applicants) are not the majority filers, although in recent years the disparity has decreased.

Top Filers




Utility Model


































Data from TIPO

For 2009, the top overall patent filers by country were Taiwan, Japan, the United States of America, Germany and South Korea. China, though not listed below, has made substantial gains over the years and already ranks number seven, just behind Netherlands.
Top Resident Applicants- 2009



Number of Applications


Utility Model







































Data from TIPO

Top Non-Resident Applicants- 2009



Number of Applications


Utility Model

































Data from TIPO

Data From TIPO

The high tech industry dominates in Taiwan, with the majority of patents related to consumer electronics. When broken down into International Patent Classifications (IPC), over 63% are related to electronics.

IPC Sub-Categories


Basic Electric Elements


Instruments - Computing; Calculating; Counting


Electric Communication Technique


Instruments - Optics


Health; Life-saving; Amustment - Medical or Veterinary Science; Hygiene


Other Electric Techniques


Instruments- Measuring; Testing


Chemistry - Organic Macromolecular Compounds; Their Preparation or Chemical Working-up


Instruments - Photography; Cinematography; Analogous Techniques using Waves Other Than Optical Waves, Electrography; Holography


Chemistry - Organic Chemistry


Instruments - Educating; Cryptography; Display; Advertising; Seals


Generation, Conversion, or Distribution of Electric Power


Instruments - Information Storage


Chemistry - Dyes; Paints; Polishes; Natural Resis; Adhesives; Other Compositions and applications of materials


Basic Electronic Circuitry


Data from TIPO

Global Cooperation & Priority Rights
In 2002 Taiwan became a member of the World Trade Organization (WTO), and thus adheres to the Trade-Related Aspects of Intellectual Property Rights (TRIPS) agreement. However, Taiwan is not a contracting member of the Patent Convention Treaty (PCT) and cannot be included in PCT applications.

Taiwan also has not signed the Paris Convention, although to fulfill the condition of WTO membership, Taiwan recognizes priority rights for applications from WTO, PCT and EPC member countries—provided the recognition is reciprocated for Taiwanese applicants (Article 27 of the Patent Act). This means the majority of non-residents filing applications at TIPO will be able to invoke their priority rights (the grace period is the standard 12 months). One notable exception is China, which does not recognize the priority rights of applications from Taiwan applications and vice versa.

On the Horizon
In less than a decade the Taiwan IP market has made significant growth, improvements and advances. Of course, the industry changes quickly. Major amendments to Taiwan's patent law are already in advanced draft stages, and include significant changes such as: providing more options for application restoration; allowing divisional applications even after notification of allowances; and incorporating inventive step into the disclosure grace period. Most recently, Taiwan and China signed a basic framework agreement on IP rights that will influence policy and IP strategies on both sides for decades to come. To stay up to date and informed of these developments, as well as news, IP events and more, be sure to subscribe to the NAIP Newsletter, or contact us at readersvc@naipo.com!

Resources & Links
Taiwan Intellectual Property Office
Taiwan Intellectual Property Court
Taiwan Intellectual Property Training Academy
NAIP Patent Blog


By Charl Goussard, NAIP Legal Research
Photo by tacoekkel

On 20 August 2009, the European Patent Office (EPO) announced its decision to amend the rules relating to Divisional Applications. Since the publication of this first notice, the EPO consequently issued a number of explanatory notices, amendments to its Guide for Examinations and even a presentation explaining the effects of the amendments of the rules – all of which might pose as an excess of information for the untrained eye.
This article attempts to serve as a basic summary, in plain English (where possible), for non-practitioners, of the amendments and various notifications issued by the EPO with regards to the 1 April 2010 amendments to the rules for Divisional Applications.

These amendments came into effect on 1 April 2010.

Divisional Application Requirements

Jumping right in, we'd like to look at the two basic requirements for a Divisional Application filed with the EPO:

1. The patent which is intended to be divided must still be pending.
This means that the earlier patent must have been filed, but not yet granted, withdrawn, or deemed withdrawn on the day the divisional application is filed.

2. The divisional application must be filed within one of the following periods:
a) For Voluntary Divisionals: within 24 months of the Examining Division's first communication (called an "office action" at the USPTO) of the earliest application for which a communication has been issued. Thus, in the case of a sequence of EPO divisional applications, the 24 month time window is calculated from the date of the first communication issued for the earliest application in the sequence. Notification of the search opinion does not constitute a "first communication", since it is not issued by the Examining Division. Furthermore, the substance of the first communication is irrelevant for the calculation of the time window.
b) For Mandatory Divisionals: within 24 months of any first non-unity of invention objection from the Examining Division . Thus, each time the Examining Division raises a non-unity of invention objection for the first time, it creates a NEW time window of 24 months in which the applicant can file a divisional application. Notification of Summons to Oral Proceedings, or the minutes of a telephone conversation with the examiner, can also count as a communication (provided that lack of unity was the basis of the objection).

However, an objection of lack of unity in a Search Opinion is not considered to be a communication from the Examining Division and will not start the time window for filing a divisional application.

Transitional Arrangements

Before 1 April 2010, a divisional application could have been filed without consideration of a time window.

However, as explained above, the April amendments brought about a change in the time allotted to file divisional applications.

To accommodate for the transition the EPO has created a six months buffer period beginning 1 April 2010. Up until 30 September 2010, applicants will be allowed to file divisional applications even though their time windows have expired before 1 April 2010. If a time window is still open on 1 April 2010, but expires soon afterwards, the EPO will allow filings of Divisionals up until 30 September even though the time window has closed prior to that date.

The important date to remember in this transitional stage is 30 September 2010!

As of the 1st of October 2010, the EPO will strictly apply the new time window for divisional applications.


The divisional application must be filed in the language of the proceedings of the earlier (parent) application. If the earlier application was not filed in one of the official EPO languages (English, French or German), then the divisional application may be filed in the non-official language of the earlier application. However, a translation will then have to be filed within two months.

Non-compliance with time limitations

If a divisional application is not filed within the 24 months window period, the application will be considered withdrawn.

Further Processing will not be possible (Further Processing is a procedure whereby an applicant can apply for an extension of a time limit).

Re-establishment of rights is, however, still available as a means to remedy the failure to observe the 24 month time window—but only if the necessary extraordinary circumstances can be proven.

Non-compliance with the time limits set for divisionals can result in fatalities for some potentially valuable divisional applications. It is therefore suggested that all currently pending applications be reviewed in order to secure filing of divisional applications before the 1 October 2010 deadline.


On 22 June 2010 TIPO launched a new program, "Ex officio Telephone Notifications for Amendments". The program went into effect on 10 June 2010 and is intended to provide applicants with greater flexibility in when amendments to claims or specifications may be filed. Now, if an invention application is in the examination or reexamination stage, an applicant may submit a request to file amendments. Previously amendments could only be made within 15 months of initial filing or only in response to an office action. Further details can be found here (Chinese).


Taiwan and China Make Strides at the EPO

by Charl Goussard, NAIP Legal Research

Recently released statistics by the European Patent Office (EPO) confirm a trend that we have noticed over the past 10 years: Asian patentees, specifically Taiwanese and Chinese, are waking up and exploring the possibilities of the European market.

As one of the leading patent prosecution firms in Taiwan, NAIP has helped promote this growth. Since 2000 NAIP's European patent applications have grown at a faster rate than Taiwan's overall rate and, based on recent statistics, currently we manage approximately 10% of Taiwan's EPO applications.

EPO Patent Applications: 2000 to 2009

The following is a selection of data released by the EPO showing total patent applications:

Taiwanese Applicants:
Only recently have Taiwanese companies shown interest in obtaining European patents. Looking at (Fig. 1) below, which indicates the percentage increase in the number of applications filed with the EPO by Taiwanese applicants, the number has leaped from 261 applications in 2000 to 1077 applications in 2009. Taiwan has had steady year-on-year increases in applications filed with the EPO – the exceptions being 2007 and 2009, which can be contributed to economic meltdowns.

Fig. 1: Percent Change in Patent Applications for Taiwanese Applicants

Chinese Applicants:
China on the other hand, started off with only 162 applications in 2000 (99 applications fewer than Taiwan), but has outdone Taiwan in applications filed with the EPO since 2007. Also, China is also the only country listed above that, despite the economic meltdown, has maintained its year-on-year increases in applications filed, (Fig. 2).

Fig. 2: Percent Change in Patent Applications for Chinese Applicants

EPO Patent Grants -2000 to 2009

Fig 3. Patents Granted by the EPO: 2000 – 2009

Figure 3 shows that the number of patents granted by the EPO to Taiwanese applicants has steadily increased from 20 in 2000 to 201 in 2009. Taiwan's growth is second only to China, who has grown from 11 patents granted in 2000 to 351 in 2009.

Please note that, tempting as it may be, it is not possible to compare grants with applications as we do not have the statistical data needed to trace the success rate of each application. Generally speaking, the EPO grants approximately 50% of all applications.

The Big Picture

Having a look at the bigger picture (Fig 4), Taiwan and China are still minorities compared to the major players at the EPO – the United States, Germany, and Japan respectively. Korea files nearly triple that of China, but far less than the BIG 3 (US, Germany, and Japan).

Fig. 4: European Patent Applications Globally

Although the numbers might seem insignificant at first, this growth trend signals a rising awareness among Taiwanese and Chinese companies of the importance and potential value of patent protection in Europe. In the past the numbers were likely low because Taiwanese companies were traditionally focused on the US-market for commercialising their inventions. Now, the shift in roles from passive manufacturers to own-brand companies and exploration of new markets has led them to increase their focus in patents. For China, their delayed entry can likely be attributed to a learning curve in intellectual property rights. In addition, many prospective applicants are put off by the relatively more expensive cost of obtaining a European Patent. Finally, among the many other reasons, a general lack of experience with European Patents may also have contributed to the past apathy.

What is causing this growth? A plethora of possibilities– some of which include: globalisation of the world economy; the shift of market resources to Europe due to competition in the US; overall growing awareness of the importance of IP, better quality patents granted by the EPO and so on.

Whatever the reasons, reality dictates that both the number of applications filed with the EPO by Taiwanese and Chinese applicants and the number of patents granted to them have made gains over the past 10 years. At NAIP, we believe that Taiwanese and Chinese companies are finally recognising the market opportunities in Europe and more importantly, are taking action and investing money to secure their European intellectual property rights.

In Search of Effective Filing

Fig. 5: Total European Patent Applications Globally

A final interesting note from the data is that, as a percentage of the total number of patents applications at the EPO in 2009, Taiwan
's applications represent 0.75% and China's 1.21%, both up from previous years. However, when looking at the actual patents granted, Taiwan's granted patents represent only 0.39% of the total number of patents granted to the countries listed. China's 0.68%.

Germany on the other hand represents 18.66% of the total number of applications filed, but managed to achieve 21.9% of the patents granted. The success rate of other countries is also similar or higher than their application rate.

Does this mean the quality of applications filed by Chinese and Taiwanese companies are of lower quality or patentability than those filed by Germany, US or even Korea? Not necessarily. The figures may be representative of the learning curve associated with implementing IP strategy in a new market. The applicant's may not be familiar with procedures, drafting differences and so on.

That is why it is imperative Taiwanese applicants have access to reliable, quality European patent partner. NAIP provides such a service. Early on we embraced the opportunity to expand our specialized patent filing services to EPO applications. Through ongoing European patent training NAIP has ensured a strong knowledge base among our patent engineers and administrative staff. That allows us to process our clients’ European patent applications effectively, focusing on quality above all. Furthermore, to maintain and guarantee high quality patents, we collaborate with a reputable German Patent Firm for the direct filing and prosecution of all of our European Patent Applications.

We believe that through our experience with EPO applications, our thorough consultations with our clients and our attention to detail, our clients can expect a much higher success rate with their EPO applications.


On 6 June 2010 Taiwan's Executive Yuan passed an amended version of the Taiwan IP Office Re-organization Statute. The amendments are aimed at tackling the patent backlog and delays in patent examination, and will increase the number of patent examiners, but maintain existing head count. This will be accomplished by reducing the number of administrative and secretarial personnel, training and transferring existing personnel, and loosening restrictions on the number of part-time patent examiners. The statute will now go to the Legislative Yuan for approval.
The announcement can be found here (Chinese).


US Continuation-in-Part Applications at the EPO

Today, companies with strong, active patent and R&D divisions develop their patent strategies with a global perspective, often filing for patents in both the United States and in Europe.

To encourage and improve the inter-office "compatibility" of US and European Patent applications, both the United States Patent Office (USPTO) and European Patent Office (EPO) have introduced programs such as the Patent Prosecution Highway Programme. However, despite these efforts, the two systems remain fundamentally different, and without proper planning and consideration of each office's specific rules and procedures, an applicant risks losing valuable rights in the application process.

One Invention – Two Systems: An example
One potential landmine is the US Continuation-in-Part (CIP) Application. Companies often first file a patent in the US, then a corresponding application in Europe claiming priority to the US patent. Later, due to rapid market changes or previously unseen application of the technology, a company sees the opportunity to extend the subject matter in its application and does so though the USPTO's CIP application.

Does the applicant have a similar option for the corresponding EPO application? How does this affect the EPO application? First, a quick look at the US CIP application:

The USPTO Continuation-in-Part Application
The USPTO provides that an applicant/inventor may add new subject matter to an existing non-provisional application, provided that the new subject matter has not previously been disclosed and that the nonprovisional application is still "alive". In addition, the new application will repeat some or all of the substantial subject matter of the already existing non-provisional application.

This new application is known as a Continuation-in-Part Application.

An advantage of a CIP is that priority from the earlier non-provisional application may be claimed. Provided that the earlier application has not been patented, abandoned or terminated on the date that the CIP is filed, such CIP will receive the same filing date as the earlier application.

(To learn more about CIP applications, please see USPTO MPEP: 201.08 Continuation-in-Part Application [R-3])

At the European Patent Office
The first thing to know is that the EPO does not provide for Continuation-in-Part Applications. The EPO does have a few options that may seem similar to the CIP, but they cannot be utilized in the same way.

The options are limited, but available....

1. Divisional Applications:
Divisional Applications are used to overcome Unity of Invention problems – in other words, to overcome the objections of claiming more than one invention in one application. Thus, when filing a Divisional Application with the EPO, the subject matter disclosed in the Divisional Application must be directly derived from the parent application as filed.

The EPO provides for Divisional Applications to be filed "only in respect of subject matter which does not extend beyond the content of an earlier application as filed..." – EPC ~ Article 76(1)

When dealing with a USPTO CIP application, it is indeed NEW subject matter which is added to the earlier nonprovisional application. Unless the new subject matter, which is disclosed in the CIP application, is already disclosed in the earlier EPO application, it will not be possible to apply for a Divisional Application.

It is thus advised to disclose and claim as broad as possible when submitting your first application. Therefore, should the examiner object to the application on the grounds of unity of invention, the applicant would be in a position to claim divisional applications from the "parent" application. However, it should be noted that the EPO has introduced a time limit of 2 years from the first communication from the EPO regarding unity of invention for claiming a divisional application.

2. Amendments:
Amendments are similar to Divisional Applications in that no new subject matter is allowed to be added to the application. However, if the subject matter disclosed by the CIP application has been disclosed in the earlier EPO application, amendments may be applied for if such amendment will not give rise to any other objections (such as Unity of Invention).

EPC 123(2)
– clearly states that no amendment to an EPO application may add new subject matter which extends beyond the contents of the application as filed.

Thus, it might be advantageous for the applicant in the EPO to file his/her application as close as possible to the expiry of the 12month priority period – claiming priority from the earlier US-application. In doing so, the applicant will have ample time to foresee and amend his/her EPO application to overcome disclosure of new subject matter (EPC –Article 87 ~ 89).

3. Filing a New Application with the EPO:
The last resort is filing a new EPO Application for the new subject matter disclosed in the CIP application.

Note that the new EPO application will be entitled to claim priority from the CIP only if filed within the 12 months priority period granted since filing of the CIP application. Also note that the priority date is the filing date of the CIP, not the filing of the date of the CIP's parent application

While this method is not ideal, it does provide a stronger measure of protection than a completely new EPO application.

As this example on USPTO CIP applications and EPO applications clearly shows, inventors and applicants of patents in multiple patent systems must be aware of the various subtle yet significant differences between the requirements of the various patent offices. Contact your patent agent or legal firm and plan ambitiously. You always scale down later.


by Charl Goussard, NAIP Legal Research

On the 1st of March 2010, Benoit Battistelli triumphed as the sixth president of the EPO. Securing the required two third majority votes from the Administrative Council of the EPO was no easy task. It took no less than four sittings of the Council, which is made up of delegates from all the member states of the Organization, to finally elect Mr. Battistelli for a term of five years.

As can be expected from such a tough election, the result was met with some criticism, mostly questioning the lengthy process and the choosing of Battistelli.

What cannot be denied is Battistelli’s superior diplomatic talent. Shortly after the first Council vote, Battistelli and Danish candidate, Kongstad, released a joint statement in which they proposed for Battistelli’s presidency, with Kongstad as Chairman of the Administrative Council. They even went on to publish a manifesto addressing major topics such as the PCT, EPO Human Resources, issues addressing Cooperation, and proper governance of the EPO.

Although the Administrative Council rejected this joint proposal, the progress made was that of cooperation between Battistelli and Kongstad. Soon after the third Council vote, Kongstad announced his withdrawal from the election and Denmark openly supported Battistelli. This was an important diplomatic move that benefited Battistelli in the long run.

Since election results in the Council are confidential, it is hard to speculate what exactly made Battistelli defeat Roland Grossenbacher, his Swiss opponent and other front-runner for the EPO presidency. A look at Battistelli’s background might provide the answer.

Currently, Battistelli heads the French Patent and Trade Mark Office, a position he has held since May 2004. In addition, Battistelli has been actively involved with the EPO for the past five years.

Battistelli believes that his experience will help him address the pressing staffing issues and grievances which exist in the EPO and manage with a firm hand. He has already committed himself to providing a more transparent organization for EPO staff members as well as better explanations of responsibilities and actions. In reaction to Battistelli’s election, the EPO Central Staff Committee said that they are hoping that the newly elected President of the EPO will display the much needed competence to communicate effectively with staff and to value their contributions and rights.

Schooled in Law and a graduate of National School of Public Administration (Ecole Nationale d’Administration, ENA) Battistelli is well-experienced in transnational trade issues. He has held various trade related posts with French government departments, notably Deputy Trade Commissioner at the French Embassies in Italy, Turkey and India. More recently, Battistelli was Chief Advisor to the Industry Minister, Mr. Nicole Fontaine, former President of the European Parliament.

Battistelli also has experience working with the World Intellectual Property Organization (WIPO) and the World Trade Organisation (WTO). Thus, facilitating cooperation among the EPO’s 36 member states and among the EPO and other organizations should not be as daunting a challenge.

When Battistelli takes up his post on the 1st of June, 2010, this Frenchman will be the second French EPO president and the first EPO president who have previously held the position of Chairman of the Administrative Council.

Battistelli, a French national, is fluent in French, English, Italian and has basic German language skills. He is a husband and father of three, and at home in the French municipality of Saint-Germaine-en-Laye he is deputy mayor in charge of culture.


1. http://www.ipjur.com/blog2/index.php?/archives/141-BREAKING-NEWS-Mr.-Benoit-Battistelli-to-become-next-President-EPO.html

2. http://en.wikipedia.org/wiki/Beno%C3%AEt_Battistelli

3. http://www.epo.org/topics/news/2010/20100301.html

4. http://www.eplawpatentblog.com/eplaw/2010/03/epo-beno%C3%AEt-battistelli-france-elected-epo-president.html


Enter the Tiger!


A Unified Patent For Europe - An Update

by Charl Goussard, NAIP Legal Research

The day when a single patent can provide protection within all European Union (EU) countries is now closer. On the 14th of December 2009, ministers from the EU gathered for a meeting at the EU Competitiveness Council. The Council, tasked with ensuring the enhancement of competitiveness and growth in Europe, had on their agenda the future of the European Patent System (for a refresher on patents in Europe and the current state of the European Patent Office, please refer to our previous article - An Introduction to the European Patent System).

The major outcome of the meeting was an agreement of a draft regulation for what is known as the EU patent. In addition, conclusions were reached on the features of a proposed unified patent litigation system (court), arrangements regarding renewal fees and their distribution between national patent offices, and methods for improved collaboration between the national patent offices and the European Patent Office (EPO).

Key Points of the Proposed Regulations

  1. One Patent, Full and Equal Protection
    The new system will introduce a single patent that provides equal protection throughout the entire EU territory (Link to webpage with countries in EU).

    Currently applicants must either apply at the various national patent offices in the individual European countries, or opt for a unified application process through the EPO.
    In the first method, separate applications need to be prosecuted for each individual country in which the applicant wishes to establish patent rights.

    When opting for a unified application process at the EPO, the prosecution stage up, until grant of the patent is unified. However, the applicant must still delegate his patents to national offices and have them verified in such offices, in order to enforce patent rights in those countries.

    One system with full and equal protection in the whole Euro-territory upon granting of the patent will make access to European markets easier, more cost effective and less risky. This change will particularly benefit Small and medium-Sized Enterprises (SME's).


  2. A Single Examination and Granting Authority: The EPO
    The EPO is to play a central role in granting the EU patent–sole responsibility for examining and granting EU patents.

    The EPO already has the infrastructure and expertise to deal with European Applications. To ensure the most effective implementation of the new patent system, it is vital that the EPO be entrusted with the administrative procedures and that their mandate extended to the post-grant phase of, for instance, managing renewal fees and the patent registry.

  3. A New Role and Revenue Stream for National Patent Offices
    All central intellectual property offices will have an essential role under the new system–giving support and advice to applicants. In turn, they will be compensated through the distribution of annual renewal fees.

    This provision ensures that local knowledge and good relationships with the national patent offices are not lost. Furthermore, applicants may make use of this extra service to obtain the best advice for their respective applications.

  4. Multiple Filing Offices
    Applicants will still have a choice to file their applications at the national offices, if more convenient, or directly at the EPO.

  5. Unified Application Fees
    To ensure fairness throughout the European Union, all filing offices will charge the same fee for filing a European patent.

  6. The European Patent Convention As the Principal Legal Structure
    In order to avoid unnecessary confusion and delay, the EPC will remain as the principle legal structure governing the pre-grant process. The EPC received a major revision in 2000 (implemented in 2007) which now makes it a trusted system.

  7. Individual National Patents Remain an Option
    The proposed regulation will not replace national laws relating to patents nor will it remove the applicant's right to apply for national patents.

    If applicants wish to only apply for a selected country or countries, they will be allowed to do so. Applicants will thus, with the new system, have an additional option, and not be limited to a unitary European patent.

  8. One Patent Court for the EU
    Having one unified patent litigation system for the whole territory will be a major advantage. The new system will cut litigation cost and ensure quick and effective enforcement of the patent rights throughout the whole Euro-territory.

The Road Ahead

Next, the EU Parliament will deliberate the proposal. Compatibility of the draft regulation and current EU laws, language arrangements for the new EU patent system, and the collaboration between national patent offices and the EU patent office will probably be some of the key issues to be debated.

Taking into account that the revised European Patent Convention (EPC 2000 edition) took seven year to come into effect, one should not be panicking about sudden changes. At least there is hope on the horizon....


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