Taiwan: IP office allows deferred examination of design applications
Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX
Copyright © Legal Benchmarking Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Taiwan: IP office allows deferred examination of design applications

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 Although a request for deferred examination can be withdrawn, the applicant is not allowed to file a further request for deferral.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.

lin.jpg

Chiuling Lin


Saint Island International Patent & Law Offices7th Floor, No. 248, Section 3Nanking East RoadTaipei 105-45, Taiwan, ROCTel: +886 2 2775 1823Fax: +886 2 2731 6377siiplo@mail.saint-island.com.twwww.saint-island.com.tw

more from across site and ros bottom lb

More from across our site

An intimate understanding of a client’s sector is essential to winning new business, a survey of over 28,000 corporate counsel reveals
Counsel say a Federal Circuit ruling on the obviousness test for design patents may increase the time IP owners spend defending their rights
While the INTA Annual Meeting is over for another year, here are a few things Managing IP learned after attending IP’s biggest party
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Four sources reveal which tools they have been using – or building – to help them with a range of tasks from invention generation to claim sufficiency
Managing IP reveals Wednesday's highlights, including a discussion on how AI is helping lawyers improve their "gut instinct" trademark decisions
Managing IP reveals Tuesday’s highlights, including an illuminating discussion celebrating women in the workplace and the challenges that remain
Dana Northcott, INTA’s 2024 president and associate general counsel for Amazon's IP team, talks about her work for the association
Managing IP reveals highlights from the INTA Annual Meeting, including law firms’ diversity and ESG concerns and a new beginning for a Chinese firm
Firms with a broad geographic reach are more likely to win work, especially from global companies with high turnovers, according to survey data of nearly 29,000 corporate counsel
Gift this article