Question 20

Question 20. (Foreing filing license): We have an application for filing in the United States Patent Office by tomorrow for a company in the United States that has a sole Taiwan inventor residing in Taiwan. Please let us know by immediate return e-mail if a foreign filing license will be required in order for us to file this utility application in the U.S. Patent and Trademark Office by the tomorrow's deadline. Please also advise if a translation of the text must be provided to your office should a foreign filing license be required. In the event that the license cannot be obtained on short notice, is it possible for us to file a U.S. provisional application without benefit of a foreign filing license and then follow up with our utility application at a later date?

Answer: Since Taiwan does not adopt or require the foreign filing license system, you can file a US utility application without the obtainment of a foreign filing license from Taiwan Intellectual Property Office, even if the sole Taiwan inventor resides in Taiwan.

Question 21. Whether a foreign filing license will be required in order to file a utility application in the U.S. Patent and Trademark Office?

Answer: Taiwan does not adopt or require the foreign filing license system. Specifically, one can file a US utility application without the obtainment of a foreign filing license from Taiwan Intellectual Property Office, even if the sole Taiwan inventor resides in Taiwan.

Question 22. Since the outcome of the cancellation proceeding is not certain, it might deserve concerned that an unsuccessful cancellation proceeding would provoke the Taiwanese patentee to initiate an action against it and its manufacturing facilities in Taiwan. Accordingly, shall an allegedly potential infringer wait to see if a Taiwanese patentee takes any adverse action against it or its customers, before initiating a cacellation proceeding?

Answer: It might be a good idea to wait until the patentee takes any offensive action before we initiate the cancellation proceedings if at that time, the clients of our client will not feel hampered from buying products from our client. If there are such threatened concerns, it might be better for us to take some actions now. Specifically, in order to balance opposite concerns from the client, it might be considerable to use a straw person to initiate the cancellation proceedings after evaluating whether this is true or practical (for not provoking the patentee). Certainly, we cannot then use any materials relevant to our client as evidence. In this way, the patentee might not know it is our client who wants to cancel the patent.

Question 23. Can a local law firm in Taiwan serve a US legal document on a corporation in Taiwan?

Answer: Please be advised that according to Article 402(2) of the Civil Proceedings Law in this country, a decision rendered in a foreign country will be null and void if the relevant papers are not properly served on the defendant. This firm can and is willing to assist in serving the related papers, a US legal document on a corporation in Taiwan. According to Article 124(1), however, it will be compulsory and legally lawful for a legal serving process on the defendant to be performed only through the local Court acting on the basis of its authority and/or entrusted by the Taiwan Ministry of Foreign Affairs requested from the US State Department further requested by the Court of USA. That is, such assistance by a local firm will not belong to the legal serving process under the Civil Proceedings Law even though it is sometimes accepted. For such assistance, our service fee will be generally around NT$6,000 (around USD200) for a single recipient if the recipient is not on the alert to refuse to receive the papers or not too cunning to be served therewith so that additional efforts are unnecessary.

Question 24. Is there no contributory (indirect) infringement in Taiwan?

Answer: Although there is no contributory infringement provision in the Taiwan Patent Law, we can equally apply the provisions in the tort chapter in the Civil Code to fight against the patent contributory infringement.

Question 25. Is a Taiwan Utility Model unenforceable prior to acquiring a favorable Taiwan Patent Office examination report?

Answer: The favorable report is called a Technical Report in the Patent Law, which could be obtained around 6 months by first petitioning before the IPO and considered favorable if no prior art is found relevant (or fatal) to patentability of claims of the utility model application. Please visit our website to find the provisions of Articles 103 to 105 of the Patent Law.

Question 26. If an applicant has a Taiwan Utility Model and two issued TW patents all directed to the same concept conglomerate, would favorable examination reports of the issued patents make the utility model claims enforceable?

Answer: In theory, if the utility model is desired to be enforced, its technical report should be positively sought and the favorable examinations of the issued patents are irrelevant. Most importantly, the two issued patents must have a broader scope to cover what is to be protected by the utility model. Accordingly, even without the technical report for the utility model, the two patents should be enough in principle for claiming infringement.

Question 27. If an application, which is very important to an applicant, receives an office action requiring the incorporation of a dependent claim into the independent claims, how should the applicant cope with such situation?

Answer: Since there are the queer examination practices in Taiwan n this connection, we would like to suggest filing a divisional application during prosecution in the IPO stage in order to prevent from being forced to somehow risk the fate of the application. By this way, we can secure patented first a basic scope or patent protection therefor and try to fight for the patentability of the original claim scope without worrying we might lose everything.