In Taiwan, both invention and design applications are subject to substantive examination. According to the Patent Act, the applicant must file a request for examination of an invention application at the time of filing the application or within three years from the filing date. If such a request is not filed in an invention application within the statutory time limit, the application will be dismissed irrevocably. On the other hand, a design application will automatically go to the examination stage after the formalities are fulfilled with no need for the applicant to request examination. Therefore a design application could be approved quite soon after filing. Though this seems favourable, it may not necessarily be what the applicant wants, especially when the applicant wishes to defer publication of that specific design due to commercial considerations.
In response to requests from various industries, Taiwan's IP Office has decided that, from July 1 2018 requests for deferred examination of design applications should be entertained.
According to the published guidelines, except for design applications that have received notices of allowance or examination reports, or from which divisional applications have been filed, applicants are permitted to file, free of charge, requests for deferred examination at the time of filing new design applications or within one year from the filing dates (or the priority dates, if claimed).
When filing a request for deferred examination of a design application, the applicant must specify in the application form an expected date for commencing/resuming examination, and said date needs to be within one year from the filing date (or the priority date, if claimed.) Although a request for deferred examination can be withdrawn, the applicant is not allowed to file a further request for deferral. In general, when the expected date for commencing/resuming examination of a design application as specified in the application form is due, the design application will be placed in the queue for examination, together with the other design applications filed in the same year.
Saint Island International Patent & Law Offices
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Taipei 105-45, Taiwan, ROC
Tel: +886 2 2775 1823
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