Q&A【Patent】

NAIP can pay renewals almost in most countries, including all the listed countries on PVIGO website. If you have special needs of paying renewals for any country, you are very welcomed to contact us.

For customers located in Taiwan, and only entrusting NAIP to pay renewals without requesting other services, the quotation is normally the final amount (TAX not included) of our service fee. Overseas clients need to cover bank charges either by choosing OUR when making remittance or by paying bank fee added to each invoice.

For most countries, there is no need to change attorney to pay renewals. In few countries, such as Malaysia, Poland, Cananda (before allowance), etc., changing attorney is required since renewals can only be paied by registered attorney.

NAIP will e-mail you the notification of completion after finishing renewal payments to the patent office. PVIGO members can also log in PVIGO website and check the renewal payment status through the function of 『Patent Docket』or『Patent Renewals』in the 【Patent Service】section.

Different countries vary. For some countries that provide official receipts (in electronic format), NAIP will send you same electronic files accordingly. For contries of no official receipt, clients may check the updated renewal payment status on the corresponding patent office website. And NAIP will provide either local agent's invoice of official fee or bank confirmation of cable transfer as proof of payment. If you have more inquiries anout payment receipt, please do not hesitate to contact us.

Normally, NAIP can accept entrustment of urgent case that is about to be due very soon. However, a surcharge or urgent fee will be charged for late payement. Please note the following: 1) For coutries that NAIP can pay renewals directly to the patent office: clients must complete entrusting procedure as least 7 working days prior to the due date to avoid generating surchges. 2) For coutries that NAIP can NOT pay renewals directly to patent office: clients must complete entrusting procedure as least 14 working days prior to the due date to avoid generating surchges for most countries. However, some foreign attorneys will charge urgent service fee strating from one month before the due date. 3)Above-mentioned situations only limit to cases not changing attorneys. If clients request to change attorneys, extra time and fees will be added according to the complexity of procedure.

If your renewals belong to the countries that have grace period, you can still pay overdue renewals within a specific period of time. But the amount of surcharge differs. For instance, in Taiwan, the penalty of paying overdue renewal within one month is 20% of the original official fee; in some other countries, the penalty is 100% of the original official fee; in America, it is a fixed amount of surcharge. PVIGO Service Team has full knowledge about the regulations of late payment and penalty in most countries; if you have more questions, you are very welcomed to contact us.

1)For clients giving payment instructions via PVIGO, NAIP will use the spot exchanged rate of the day of online order. 2)For clients giving payment instructions NOT via PVIGO, NAIP will use the spot exchanged rate of the day invoice is issued.

Please refer to the Taiwan Patent Official Fees Reduction Rules.

Please refer to the China Patent Official Fees Reduction Rules.

Please refer to the The United States of America Patent Official Fees Reduction Rules.

Please refer to the European Patent Official Fees Reduction Rules.

Please refer to the Canada Patent Official Fees Reduction Rules.

Please refer to the Germany Patent Official Fees Reduction Rules.

Please refer to the France Patent Official Fees Reduction Rules.

Please refer to the Japanese Patent Official Fees Reduction Rules.

Please refer to the Korea Patent Official Fees Reduction Rules.

Please refer to the Mexico Patent Official Fees Reduction Rules.

Please refer to the Norwegian Patent Official Fees Reduction Rules.

Please refer to the Singapore Patent Official Fees Reduction Rules.

Please refer to the South African Patent Official Fees Reduction Rules.

When no relevant prior art can be found to reject the application, it will take about 14 months from the date of request for a substantive examination to issue the first OA or Notice of Allowance by the KIPO.

When filing an application, an applicant will have to pay only the basic fee. But when requesting for a substantive examination, in addition to the basic fee, the applicant will have to pay additional fee for each patent claim. The more claims it contains in one appication, the more money it will cost.

Similar to Taiwan's regulations, one multiple dependent claim cannot depend on another multiple dependent claim.

Yes. Rough features of the invention can be submitted first, and then the clear claim of patent application should be supplemented later. However, the claim must be submitted within one year and two months from the priority date. Before that, those who request a substantive examination must submit the claim at the same time. In addition, the substantive technical content must be submitted when it is proposed. Therefore, although the claim can be supplemented later, it is quite difficult to change the SPEC, which is a noteworthy part.

No. A U.S. provisional application is for inventors to record a date that may matter later in patent prosecution. Therefore, claims are not required. Once all the necessary data are ready, the applicant may file a new nonprovisional application with a complete specification and claims. A specification without claims can be used to file a Korean patent application on or after 1 July 2007. Such an appilcation (i.e., one filed with no claims) is still regarded as a nonprovisional application in Korea, and the applicant will have to supplement later all required documents (e.g., the claims).

It is acceptable to submit an English patent specification first and then, within 14 months from the priority date, submit the Korean translation of the patent specification. However, this does not apply to PCT applications that enter Korean national phase.

Within the response period, supplemental amendments to the claims can be filed.

Since the technology of a device invention is more clear and easy to grasp than that of a method invention, a device invention has obvious advantages in cases of infringement litigations, for it is easier to determine whether there is indeed an infringement.

As to the grant rate of Korea's substantive examination, it varies from technology to technology, so there is no definite figure of the approval rate.

Most of the applications filed by Taiwanese in Korea are for registration of utility models, mainly because they are relatively easier to be granted. Anyhow we would like to remind that although it is easer to register a utility model, a granted patent still offers better protection. If unable to obtain sufficient protection for the invention, speedy registration of a utility model may not be worth the cost you spend.

In Korea, 98% of the applications are currently filed electronically, mainly because additional fees are charged for applications filed in paper form. Most Koreans are more willing to apply electronically. Besides, the KIPO encourages e-filing.

Yes. There is a specific department dealing with "Business Method" applications in KIPO, but the grant rate is not very high, only about 20%.

Generally "the prior art" is referred to as "the state of the art" in Korea. Attension should be drwan to details of the prior art when drafting the patent specification. Any insufficient or inappropriate description may be a ground of rejection. In addition, a Korean patent examiner may combine prior arts he or she found with those disclosed by the applicant when determining whether an application involves an inventive step or is non-obvious. Therefore, when applying for a Korean patent, it is wise to think twice about the prior arts to be disclosed. Specifically, one may want to avoid his or her own previously-filed applications being cited to reject his or her subsequently-filed applications.

The KIPO allows means-plus-function or method claims. Scope of such claims of an application must be interpreted by considering the patent specification and drawings.

To apply for a software patent in Korea, claims must contain hardware elements. When drafting claims, it is necessary to cite some specific hardware component the software is working on, or it will only be regarded as an ineligible abstract idea. Likewise, as to an application for business method patent, it is necessary to integrate the business method with some computer device in the claims.

An applicant who has received the first notice of final rejection in Korea (similar to a final rejection in the U.S.) can either request for reconsideration with amendments (like an RCE with submission in the U.S.) or to file a notice of appeal without amendments. If to go with a request for reconsideration by the examiner and if then the second notice of final rejection is issued, the applicant can no longer request for reconsideration by the examiner. He or she will have to file a notice of appeal.

According to relevant Korean laws, legal actions cannot be executed without the consent of all co-owners. the consent of all co-owners is required.

As long as one of the patent co-owners is not a small entity, it is not eligible for small entity fee reductions.

According to 37 CFR 1.53(c)(2), a nonprovisional application can be converted to a provisional application, provided that the nonprovisional application is not yet abandoned, that an issue fee has not been paid, and that the conversion request is submitted within 12 months from the filing date of the nonprovisional application.

It provides no specific rules regarding the ownership of in-service inventions in the U.S. patent law or rules. Therefore, the ownership of an in-service invention made by Inventor-Employee X should be assigned from Inventor-Employee X to Company A before it is further assigned to Company B. There must be two deeds of assignment, one for transfer from Inventor-Employee X to Company A, and the other for transfer from Company A to Company B.

According to 37 CRF 1.78(a)(2) and MPEP 211.01, subsection II, if to claim benefit of a provisonal appication in a nonprovisional application and if inventors of the two applications are not identical, the benefit claim may still be valid, should there be an overlap of inventorship.

U.S. patent maintenance fees can be paid by the patentee or any third party without a change of power of attorney. However, to have relevant notices be mailed to an address different from that of record, it is required to file form PTO/SB/47 with the USPTO.

According to MPEP 2233, subsection I, after issuance of the reexamination certificate, there is no need to pay another issue fee. According to MPEP 2506, the filing of a request for reexamination and the publication of a reexamination certificate do not alter the schedule of maintenance fee payments or patent term of the original patent.

According to 37 CFR 1.72(a) and MPEP 606, the title of the invention should be placed at the top of the first page of the specification unless it is provided in the application data sheet (ADS). It is better not to have different invention titles disclosed in the two places. In case there is any inconsistency between the two, according to 37 CFR 1.76(d), the ADS will govern if both are filed concurrently.

According to 37 CFR 1.72(a) and MPEP 606, the title of the invention should be placed at the top of the first page of the specification for a provisional application unless it is provided in the application data sheet (ADS).

According to 35 USC 254 and 37 CFR 1.322, mistakes in patents incurred through the fault of the USPTO may be corrected by certificates of correction. A request for certificate of correction under such a circumstance requires no payment of official fees.

According to 37 CFR 1.63(d)(1), a newly executed inventor's declaration and assignment may not be required for an inventor in a continuation or divisional application, provided that a declaration and assignment in compliance with the rules executed by such inventor has been filed in the parent application. However, when a new inventor is added, the added inventor must still sign the required inventor's declaration and assignment. If any inventor listed in the parent application is not an inventor of the continuation or divisional appilcation, a statement may be required to state the name of each inventor in the continuing application.

Regardless of which country serves as the receiving office of a PCT application, an appicant may claim priority of the previously-filed PCT application in his or her corresponding patent application filed in Taiwan.

The rights of a patentee are as follows: 1. After the publication of the patent application and before the grant of the patent, since a patent has not been granted, no infringement of patent rights can be constituted yet. For any unauthorized use of the invention during this period, it is possible to notify in written form the entity who uses the invention without authorization of the patent application. Once the patent grants, the patentee may claim compensation for his or her loss incurred during the period between the date of the written notification and the grant date. An owner of a utility model patent, however, is not entitiled to such compensation. 2. After the grant of the patent, a patentee shall have the right to claim damages for patent infringements.

According to Taiwan's Patent Act, Enforcement Rules of Patent Act, and Patent Examination Guidelines, it is not mandatory to have Taiwan Intellectual Property Officeas (TIPO) as the first filing office for an invention made in Taiwan.

If the original application is allowed, the request for conversion shall be submitted before the delivery of of the grant decision. If the the original Utility Model application is rejected, the request for conversion shall be submitted within 30 days from the delivery of the refusal decision.

A request for prioritized examination can be filed to speed up patent prosecution in Taiwan, provided that it is a laid-open application for invention patent ready for substantive examination and commercially exploited by a person other than the applicant. If the application is not yet ready for substantive examination, a request for substantive examination must be submitted simultaneously.

When filing a response to the OA in the application for invention patent, the applicant shall declare with two identical copies of one written statement that he or she abandons the granted utility model patent as from its filing date. No fee shall be payable for the abandonment of the granted utility model patent.

According to China's Guidelines for Patent Examination, applicants of a subsequent application that claims priority shall be the same as applicants, or at least include one of the applicants, of the priority application. Where applicants of the two applications are entirely different, an assignment of the right to apply for a patent from applicants of the priority application to applicants of the subsequent application must be submitted within three months from the filing date of the subsequent application; otherwise, the CNIPA will notify that the declaration of priority claim in the subsequent application is deemed not to have been made.

There are no continuation applications in China as those in the United States. In China, only one patent may be granted for one invention in principle. An applicant will not be allowed to file two applications for the same invention. In addition, according to the Patent Law of the People's Republic of China, if a patent application includes two or more invention concepts, the applicant may file a divisional application on his own initiative or in response to an objection as to lack of unity of invention. A divisional application shall not add new matter that is not disclosed in the specification of the parent application. If an applicant intends to add new matter not disclosed in the previously-filed application, a new application must be filed to claim domestic priority of the previously-filed application. By doing so, new matter not disclosed in the previously-filed application will not benefit from the domestic priority claim. To claim domestic priority of a previously-filed Chinese application, the subsequent Chinese application must be filed within 12 months from the filing date of the previously-filed application. Only applications for invention patent or for utility model patent may claim domestic priority in China.

It is not possible in China to request for convertion of one already-filed patent application into anther type of patent application. Claiming domestic priority, however, might be an alternative. For instance, an applicant may file a new application for utility model patent or invention patent within 12 months from the filing date of his or her previously-filed application for utility model patent, claiming domestic priority based on the same subject matter disclosed in both applications.

According to the Patent Law of the People's Republic of China, where the patent right is assigned, the parties shall submit relevant certificates or legal documents to and request for registration of the transfer with the Patent Administration Department under the State Council.

Although the assignment registration is served only as a notice to the public, if a name change is not made of record in the EPO Register, as far as the registration information is concerned, the patentee will not be able to claim any right with the new changed name. Therefore, if there is a name change of the patentee, it is recommended to file a request for registration with the EPO, so as to ensure that entitlement of the patentee will not be brought into question.

It is possible to request for early publication of a European patent application, but there is no way to request for non-publication of a European patent application. To request for early publication, according to EPO's Guidelines for Examination, the filing and search fees must have been validly paid, and there must be no formal deficiencies in the application documents. Such a request can be submitted simultaneously with the filing of the European patent application. No additional official fees are required. The request can be submitted after the filing date; yet, it shall never be submitted after 18 months from the earliest priorty date. In fact, the EPO's technical preparations for publication are considered terminated 5 weeks earlier. If it has been scheduled for publication, it is not possible, nor necessary, to request for early publication.

According to Art. 54(3) EPC, European patent applications (including PCT applications designating or electing the EPO) filed earlier than but published on or after the filing date of a subsequently-filed European patent application may be part of the state of the art when considering novelty of the latter, which is same as rules of the U.S. However, it stipulates under Art. 56 EPC that earlier applications under Art. 54(3) EPC are not part of the state of the art when considering inventive step of a subsequently-filed application, which is different from rules of the U.S..

After the EPO grant, according to EPC, a European patent may be revoked with effect for a Contracting State. Therefore, if the 9-month opposition period has expired and there are no opposition proceedings pending before the EPO, revocation action may be brought before the Federal Patent Court in Germany pursuant to the German Patent Act (Patentgesetz). Note, however, that litigation cost will be relatively high.

For a European patent validated in the UK ("a European patent (UK)"), there are two situations- #1. For a European patent (UK) with EPO's English publication of patent application and of the mention of its grant in the European Patent Bulletin: - According to Sec. 78(3)(d) of the UK Patent Act, the EPO's Englsih publication of patent application is treated as a publication of application in the UKIPO's Patents Journal. According to the provisions of Art. 67 EPC and Sec. 69 of the UK Patent Act, there is a chance to bring proceedings for damages in respect of any act which would have infringed the patent and ocurred within the period from the date of publication of the European patent application to the grant date of the European patent. - According to the Sec. 77(1) and 78(3)(f) of the UK Patent Act, the EPO's English publication of the mention of its grant in the European Patent Bulletin is treated as if notice of the grant of the patent had, on the date of that publication, been published in the UKIPO's Patents Journal. Therefore, according to the Sec.78(2) of the UK Patent Act, Sec. 69 of the UK Patent Ac tis applied mutatis mutandis. The patentee of a European patent (UK) has the right to bring proceedings for damages in respect of any infringement committed on or after the grant date of the European patent. #2. For a a European patent (UK) with EPO's non-English publication of patent application and of the mention of its grant in the European Patent Bulletin: - To bring proceedings for damages in respect of any act which would have infringed the patent and ocurred within the period from the date of publication of the European patent application to the grant date of the European patent under Art. 67 EPC and Sec. 69 of the UK Patent Act, a translation into English of the claims of the specification of the application must 1) have been filed at and published by the UIIPO and the prescribed fee must have been paid or 2) have been sent to the person alleged to have done the act. - According to the UK Patent Act Sec. 77(6)(a) and Rule R.66(6) of the UK Patent Rules, a translation of the specification into English must have been filed at the UKIPO and the prescribed fee must have been paid within 3 months from the EPO grant before the patentee of a European patent (UK) has the right to bring proceedings for damages in respect of any infringement committed on or after the grant date of the European patent. (According to Sec.77(9) and 78(8) of the UK Patent Act and Rules 66(9), (10) of the UK Patent Rules, as the London Agreement took effect on 1 May 2008, the requriement of submission of English translations had ceased to apply. )

According to Article 30(1) and (2) of the Japan Patent Act, if an invention is disclosed by the applicant himself or a third party's action which is contrary to the intention of the applicant/patentee, it is still possible to file a patent application within 12 months from the day when the invention is made available to the public. This public disclosure will not be used as a prior art reference for rejection.

According to Article 46(1) of the Japan Patent Act, a utility model application not yet registered can be converted to patent application. Therefore, if the utility model application has already been registered, it is not allowed for conversion. For a utility model application filed on or after 1 October 2001, the conversion request must be filed within three years from the filing date of the utility model application.

According to Article 73 of the Japan Patent Act and related regulations, without consent of all patent co-owners, any co-owner cannot execute assignment or license agreement with others; however, any co-owner can independently sue a third party for patent infringement without consent of all patent co-owners.

There are no continuation applications in Japan as those in the United States.

In Japan, patent applications filed earlier than but published on or after the filing date of a subsequently-filed patent application may be part of the state of the art when considering novelty of the latter. However, such earlier applications are not part of the state of the art when considering inventive step of a subsequently-filed application, which is different from rules of the U.S..