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Patent Filing Process
Date of Announcement
2020-07-17
NTU’s patent application filing may be done in two ways.

 

 

 

Regular Application

Self-funded Application

Time of  Application

1. The R&D results merit patent application filing.

 

2. The application must be approved by the University before submission.

 

3. Review items: Verification of the applicant’s qualifications (e.g. the attribution of patent rights, the identity of the applicant, etc.), and whether the application fulfills the patent application criteria based on the invalidity search assessment.

1. The applicant, for some reason, is unable to submit patent application in accordance with the University’s internal procedures.

 

2. The application was not approved by the University.

 

3. The applicant is required to complete the University’s application procedure before filing a patent application to the authorities concerned independently. Also, NTU must be listed as the applicant on all relevant application documents.

General Principles

1. Priority is given to patent filing in Taiwan and the United States.

 

2.If the applicant wishes to submit patent applications in other countries (including the EU and PCT), the inventor is required to provide documentations in support of the following criteria to be reviewed by the University. Applications may be submitted only if they have been approved by the University.

 

  • An enterprise is interested in technology transfer.
  • The invention has licensing potential.
  • The invention receives positive market assessment.

 

 

 


 

Two-phase Patent Application:

Besides submitting nonprovisional patent applications in Taiwan and the US, the inventor may also consider filing a provisional application in the US.

 

Phase One: US Provisional Patent Application

● Introduction:

1. The process is simple and thus allows the inventor to promptly obtain a patent application submission date and number. However, as provisional applications are not reviewed by the US officials, the inventor will not obtain patent rights in the future.

 

2. The inventor request the University to file the application on their behalf via an IP firm.

 

3. As research starts to produce results, the inventor may file US provisional patent applications one by one, and submit the completed US nonprovisional application encompassing these provisional applications within one year after the first US provisional patent application is filed.

 

4. A provisional application may include multiple technology contents and is not limited to one invention per application.

 

5. There are no restrictions on the times of application for the same technology. As long as the technology is not yet made public, repeated applications are permitted.

 

6. When nonprovisional applications are submitted internationally, the US provisional application filed within one year may be used as grounds to claim international priority.

 

7. US provisional applications may help increase opportunities for technology transfer.

 

● Application Process:

1. Prepare the technical documents (such as theses or technical information, no required format).

 

2. The application must first be submitted to the University before the inventor files a patent application on their own or via an IP firm. The application documents may be downloaded on the Center’s website. Applicants may also contact the Center’s IP management staff for any other questions.

 

● Note: Please be sure to file the US provisional patent application before making the technology public.

 

 

 

Phase Two: International Nonprovisional Applications

● Advantages of later-stage patent applications:

1. A list of IP firms is provided for the professor to choose from.

 

2. If the invention involves other non-NTU inventors or agencies who are co-owners of the patent rights, the Center will be responsible for negotiating and clarifying the attribution of patent rights.

 

3. The technology transfer manager has a close understanding of each case and is able to resolve any issues that arise in a prompt manner.

 

4. Patent application filing fees can be shared.

Applications fees (including fees for the first three responses at most), certificate fees, the first payment of patent annuity/maintenance fees, IP firm service fees, and other patent related fees required by law shall be shared in accordance with the following principles:

 

Notes on the Old and New Contribution Schemes of Patent Filing Fees:The NTU Administrative Guidelines regarding Research and Development Results and Technology Transfer were amended at the University’s 2812th administrative meeting. Major changes were made to the patent application fee contribution schemes, and the new system took effect on August 15, 2014. The application of old or new system is determined by the date of submission.

 

◎ Old System One: Applications submitted on or before April 15, 2012.

 

Patent filing fee contribution schemes

 

 

Patent filing fee contribution rate (%)

 

Patent income distribution rate (%)

 

University

 

Inventor

 

College/department/

institute

 

University

 

Inventor

 

College/department/

institute

 

A

 

90

 

5

 

5

 

70

 

20

 

10

 

B

 

85

 

10

 

5

 

40

 

50

 

10

 

C

 

65

 

30

 

5

 

30

 

60

 

10

 

D

 

45

 

50

 

5

 

20

 

70

 

10

 

 

◎ Old System Two: Applications submitted on or after April 16, 2012 through August 14, 2014.

 

 

University (%)

 

Inventor (%)

 

College/department/institute (%)

 

Without a funding agency’s subsidy for the University’s patent filing fees

 

45

 

50

 

5

 

With a funding agency’s subsidy for the University’s patent filing fees

 

75

 

20

 

5


Notes for patent application filing:

1. According to Patent Act’s regulations regarding inventions made in the performance of an employee’s job duties, as well as Article II of the NTU Administrative Guidelines regarding Research and Development Results and Technology Transfer, NTU is the IP rights owner of inventions derived from NTU faculty or staff members’ research work performed during their employment or with NTU resources, unless otherwise stipulated in the contract. The patent rights owner is therefore National Taiwan University.

 

2. If the inventor fails to pay the patent filling and maintenance fees as stipulated in the fee contribution scheme after the Center has sent out three notifications, the due payments will be deemed as owed patent fees and handled in the following ways:

 

 (1) No new patent applications may be submitted by the applicant before the owed patent fees are paid in full.

 

(2) All pending patent applications will be suspended from all processes, and certificates will be withheld for approved applications, until the owed patent fees are paid in full.

 

(3) The patent income distribution procedures will not begin until the owed patent fees are paid in full.

 

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