"*~FAQs for Patent~*"

Co-Ownership in Taiwan Patent (through Qs & As) 

  1. Is it possible for one of the co-owner to file the extension in your country without the approval of the other co-owners,
- in the name of the two co-owners
- in its only name.
Answer:  It will be necessary to file the extension in the name of the two co-owners.  Unless it is possible to cancel the part invented by the other owner or obtain the assignment executed by all inventors to effectuate this extension under the sole name, or the other party rejects to execute, one party may petition to extend in its own name.

  2. For a patent being filed in co-ownership, can each co-owner work the patent without the agreement of the other co-owner.
- If only one co-owner works the patent, is a compensation due to the co-owner which does not work the patent.
Answer: Each owner can work by itself the patent without the consent of or the compensation due to the other.  For example, for using the invention by itself, the joint applicant can sub-contract the manufacturing or consigning works or tasks to a third party, such as OEM and processing of patented goods, without the consent of the other joint applicant(s).  Nevertheless, this will not apply if there is any assignment or license.  Specifically, a joint applicant for a Taiwanese patent application enjoys full rights in relation to the use of the invention.  Such rights, however, should be within the limits of the use of the joint applicant itself.

  3. Is it possible for one of the co-owners to grant without the agreement of the other co-owner(s).
- An exclusive license.
- A non-exclusive license.
Answer: No, it will be necessary for one of the co-owners to grant a license subject to the consent of the other co-owner.

  4. If it is possible, is a compensation due to the other co-owner.
Answer: N/A.  If there is a license, any co-owner must have a compensation.

  5. Is it possible for one of the co-owners to assign its share of co-ownership without the agreement of the other co-owner?
Answer: No, it will be necessary for one of the co-owners to assign its share of co-ownership with the consent of the other co-owner(s).

  6. Is it possible for one of the co-owners to bring a suit against an infringer without the agreement of the other co-owner?
Answer: Yes, it will be possible for one of the co-owners to bring a suit against an infringer without the consent of the other co-owner(s).

PCT in Taiwan 

  Since Taiwan is not a party to the Paris convention, it will be impossible to designate and enter into the national phase in Taiwan or claim the priority on the basis of the PCT corresponding application if it has been over one year from the filing date of the PCT application.  If any corresponding foreign application has been published or patented, it will be no more possible to seek patented an application here since it has lost the novelty.

  Nevertheless, a Taiwan application can claim the priority from the PCT application if the PCT application is the first filed application and the priority deadline from its filing date has not expired.

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Patent Enforcement 

  Once the invention/design/utility patent is issued, it is certainly possible to enforce the patent right.  The only burden in bringing an action for enforcement is to identify who is infringing and how the infringer infringes which are normally substantiated by submitting an invoice and the product the infringer sells.  The clients can conduct actions as follows:

      1) Send a warning letter to the infringer.
      2) Petition the seizure of the infringer”¦s relevant products in order to curb the spread of he infringement damage
          before the court
      3) Claim the infringer”¦s patent infringements before the Courts according to the Patent Law.