"*~FAQs for Patent~*"

Claim Multi-Dependency

Taiwan adopts simple multi-dependency for claims.  Namely, a multi-dependent claim can depend from a simple dependent claim and vice versa.  Specifically, a multi-dependent claim cannot depend from a multi-dependent claim.  There will be several ways to solve multi-dependency according to different ideas.  For example, we can directly provide mechanical amendment(s) without any judgment by additionally listing all possible derived individual dependent claims.  We can alternatively amend these multi-dependent claims into just depending on independent claim(s) or some personally preferred specific claim.  The former appears clumsy to some extent and might result in a large number of claims and the latter might lose some coverage which the original claim drafter desires to protect.

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Grace Period for Annuity

  There is a six-month grace period after expiration for paying the annuity.  It will be difficult, nearly impossible, to successfully obtain the restoration according to current patent practice.  The reason is that even if the Applicant can petition a reinstatement according to the Patent Law, it should be owing to force majeure, e.g. earthquake, natural disaster, warKand so on by the inextensible deadline so that the Client could not timely pay the aforementioned annuity.  That is to say, for petitioning successfully a reinstatement, we must submit the relevant evidence to clarify such miss was caused by a natural calamity rather than the applicant and/or its counsel.  In addition, it is also necessary for us to submit the payment of the annuity, within 30 days following the date of disappearance of the reason for the reinstatement.

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Inner Priority

  An applicant may claim priority from an invention or creation disclosed in the specification or drawing in a prior filed application for a later filed patent application based on the prior filed invention or utility model patent application within one year in this country.  Examination of patentable requirements on a patent application entitled to the priority shall be made on the basis of the priority date.  However, the prior application in the preceding paragraph shall be deemed withdrawn after 15 months from the filing date.  That is, if there are different contents between the above both texts to be respectively protected, it will be necessary for us to withdraw the inner priority claim for the later application and amend the claims into a claim set excluding those having been protected by the later application for the earlier application.  Specifically, if the 5 priorities contain A, the earlier filed one A+B and the later one A+B+C, we need not keep the earlier one.  But if the later one contains A+C without B, we need to keep a valid earlier one.

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Issues Regarding Priority

  A Taiwanese application can optionally be filed by the priority deadline regardless of whether or not there is an issuance occurred within the one year following the filing date of the priority application.  That is to say, the issuance of the priority application prior to the priority deadline will have no implications with regard to filing of the corresponding Taiwanese application. 

  According to the practice here, it is necessary for us to claim all priorities upon filing so that it will be impossible to add any priority after filing.

  If the first priority claim deadline has not expired, we could re-file a new application claiming all priorities under the regular procedures.  Otherwise, if necessary, we could only file a new additional application to claim the lapsed priority application.

 

Inventor Unavailable for signature

  It will be sufficient for us to submit an affidavit letter signed by an officer of the company (and notarized), indicating that all the inventors have signed employment agreements that include invention clauses (which could be quoted) in order to maintain the earliest priority date for the application. 

  Alternatively, we just need the relevant part of the employee's agreement which can clearly show there is an employment between two parties.  It will be preferable however for us to submit the affidavit with a copy of the whole agreement with the inventors.  For such executed and notarized document, it will be sufficient either on A4 size paper or letter size paper. 

 

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