Question 80. As for Taiwanese applications and Hong Kong applications,
(1) Are there any circumstances in which filing an express abandonment of an application would result in a refund of at least some of the fees already paid?

Answer: for Taiwan:  It is impossible for us to obtain any refund if the fees have already been paid unless there is any overpayment.  There will be accordingly no circumstance in which filing an express abandonment of an application would result in a refund of at least some of the fee already paid.

Answer for Hong Kong: If a request to withdraw the application is made before the prescribed date (see (2) below), the examiner may allow the refund of the advertising fee (i.e. HK$68) which is paid upon the filing of the patent application.  Whether the refund will be made is subject to the determination of the examiner.  The patent law does not provide for circumstances of such refund and upon our enquiry with the patent registry, we are told that such refund is possible but subject to the discretion of the examiner.

We have handled some cases in which the clients asked us to withdraw/abandon the same day we file the application and we did manage getting full refund of all official fees, i.e. filing fee + advertising fee.  There is however no guarantee that full refund is always available.

For your further information and in case you wish to defer paying the official fees, you may instruct for filing of an application without paying the official fees but this is only possible via paper filing (not e-filing), so some prior lead time must be allowed for us to receive and work on your instructions and send in the paper application to the Patents Registry.  The non-payment of official fees is a filing deficiency (s.17(1), Patents Ordinance, Cap.514) and the Registrar will give 1 month (r.16, Patents (General) Rules, Cap.514A) for the deficiency to be remedied (payment of official fees) and if no official fees are paid in that 1 month, the application will be considered never having been filed.

(2) What is the latest date when an express abandonment could be filed?  (3) What is the approximate refund?

Answer for Taiwan: N/A.  Please see the above.

Answer for Hong Kong: If the applicant is to withdraw the application, a request must be made before the date on which preparations for publication of the specification of the parent application are completed.

(4) What would the approximate charges be (including your firm's charges and any official fees) for filing an express abandonment?

Answer for Taiwan: For petitioning the withdrawal, our service fees will be NT$1,500 without any official fees.

Answer for Hong Kong: There is no official fee for the withdrawal.  We will charge around NT$8,000 for making the request and following through the actual withdrawal.

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Question 81. How to conduct an equivalency check of a foreign patent in Taiwan?

Answer: The simplest way is to locate its patent family in order to find there is one.  If we could not locate any corresponding Taiwan application from the patent family but it is extremely critical to so ascertain, since the English name of any of the applicant, the inventor and the patentee or its Chinese equivalent is not readily obtainable or reliable from the data bank of the Searching Website of TIPO, the following ways might look suggestible:

1.      Asking TIPO to provide, from their internal database, list respectively showing all applications filed by the specific applicant or invented by the specific inventor.  From the list, we could take a look whether there might be any desired counterpart;

2.      Using various searching skills nearly of all kinds available from the IPO website database to locate any Taiwanese application.

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Question 82. Our client has developed a software that uses a Microsoft based programme. How can they protect their work in TW? (and other countries that you can proceed)

Answer: Article 4 of the Copyright Law provides that "Works of foreign nationals that comply with one of the following conditions may enjoy copyright under this Act; provided, where the terms of a treaty or an agreement that has been ratified by resolution of the Legislative Yuan provide otherwise, such terms shall govern:
1. Works that are first published in the territory under the jurisdiction of the Republic of China, or are published in the territory under the jurisdiction of the Republic China within thirty days after their first publication in territory outside the jurisdiction of the Republic of China; provided, this shall only apply where the country of such foreign national extends protection under identical circumstances to the works of persons of the Republic of China, and such protection has been verified.
2. Where by treaty or agreement, or under the domestic acts, regulations, or standard practice of the home country of the foreign national, works of persons of the Republic of China enjoy copyright in such country."

 Accordingly, one should be alert to the provision "first published in the territory under the jurisdiction of the Republic of China, or are published in the territory under the jurisdiction of the Republic China within thirty days after their first publication in territory outside the jurisdiction of the Republic of China" in the above article.

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