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Patent Filing Q&A

What is a patent ?

 

A: An inventor is entitled to file patent applications for their inventions with the Taiwan Intellectual Property Office to protect their proper rights. If an application is approved in accordance with the Patent Act, the patentee is granted patent rights to the invention and has the exclusive right to prevent others from exploiting the invention without the patentee’s consent. Where the invention is a product, exploiting of invention means the acts of making, selling, offering for sale, using, or importing that product for the aforementioned purposes. Where the invention is a process, exploiting of invention means the acts of using the process, and the acts of using, offering for sale, or importing for these purposes the product obtained directly by that process. Such rights are patent rights.

What types of patents are there? What are their differences?

 

Each country has their own regulations regarding the types of patents. Taiwan’s Patent Act defines three types of patents: invention patent, utility model patent, and design patent.

 

An invention is defined as the creation of technical ideas utilizing the laws of nature and expressed in a product, process, or use of product.

 

A utility model is defined as the creation of technical ideas utilizing the laws of nature and expressed in the innovation of the shape, structure, or device of an article. A utility model creates a new function or improves the effectiveness of an article.

 

A design is defined as using the shape, pattern, color, or any combination thereof to create the visual effect of higher quality, friendliness, or value, so as to improve the product’s competitiveness and visual appeal.

What are the terms of invention, utility model, and design patents?

 

A: According to Taiwan’s Patent Act, invention, utility model, and design patents are all granted patent rights from the day the approval is announced. The term is 20 years from the filing date for an invention patent, 10 years from the filing date for a utility model patent, and 12 years from the filing date for a design patent.

Can research results be published before the patent application is filed?

 

A: Patent offices in many countries have similar regulations on grace period but the lengths of time may vary. In practice, the grace period is 12 months in Taiwan, the US, Japan, and South Korea, whereas in other countries the grace period lasts mostly 12 or six months. Additional restrictions apply in China and Europe. It is therefore recommended that technology be published after the patent application process is complete to avoid compromising the newness of the invention.

What is the patent application process within the University?

 

A: The applicant should fill out the Research Results Patent Application Form (for regular applications) or the Self-Funded Patent Application Form (for self-funded applications). Please download the corresponding application form via the Center’s website (http://research.ord.ntu.edu.tw/CO1/download.aspx). The form should be filled out, printed, signed by relevant personnel, and then stamped by the applicant’s affiliated department head/director/center director and dean before it is submitted to the Center of Industrial-Academic Cooperation.

NTU must be listed as the applicant for both types of application processes. For regular applications, the University and the inventor will share the costs of patent filing fees. For self-funded applications, the patent filing fees will be borne solely by the inventor.

 

If the research results are from research projects of government agencies (such as the Ministry of Science and Technology, the Ministry of Economic Affairs, the Council of Agriculture) or other academic research institutes, the applicant must also attach the project’s approval list or agreement.

 

The Center of Industrial-Academic Cooperation will then assess if the application may be filed based on initial invalidity search. For regular applications, if the inventor wishes to file applications in countries other than Taiwan and the United States, documents will need to be provided in support of the following three criteria:

 (1) An enterprise is interested in technology transfer.

(2) The invention has licensing potential.

(3) The invention receives positive market assessment.

How does the inventor choose a patent firm?

 

A: The Center of Industrial-Academic Cooperation will provide a list of patent firms for the inventor to choose from. If the inventor prefers another patent firm, since the University has maximum limits on patent firm fees, the firm must be willing to accept the University’s fee standards.

When meeting with a patent firm, the inventor may raise pertinent questions to determine which patent firm to work with, including the firm’s years in business, the education and experience of its patent engineers of relevant fields, the number of patent applications granted, as well as whether the patent engineer will be able to understand the patent application’s technology, etc.

For regular applications, does the applicant have to pay for patent filing fees? How are the costs of fees shared by the inventor and the University?

 

A: 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. Patent income is distributed according to the percentage rates detailed below after the amounts paid to the following parties are deducted: the funding agency, the University, and the inventor for their costs (including patent filing fees), and staff members who contributed to the promotion efforts (5% maximum).

Old System One: For patent applications submitted on or before April 15, 2012, the patent filing fee contribution schemes and patent income distribution rates are as follows:

Patent filing fee contribution scheme

分攤比率方案

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: For patent applications submitted on or after April 16, 2012 through August 14, 2014, the patent filing fee contribution schemes and patent income distribution rates are as follows:

(1)      Patent filing fee contribution rates (%)

 

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

 

(2)      Patent income distribution rates (%)

 

University (%)

Inventor (%)

College/department/

institute (%)

Patent licensing cases

20

70

10

Cases without patent licensing

40

50

10

       

New System: For patent applications submitted on or after August 15, 2014, the patent filing fee contribution schemes and patent income distribution rates are as follows:

(1)  Patent filing fee contribution rates (%)

 

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

55

40

5

 

(2)      Patent income distribution rates (%)

 

University (%)

Inventor (%)

College/department/

institute (%)

Patent licensing cases

20

70

10

Cases without patent licensing

40

50

10

※When a research center of the University submits a patent licensing application to the University’s patent office, and the application is approved for technology transfer type of Industrial-Academic Cooperation Projects, 15% of the income (if any) will first be deducted to be given to the research center, and the rest will be distributed according to the “patent licensing cases” income distribution rates detailed in the foregoing item .

(in accordance with the NTU Administrative Guidelines regarding Research and Development Results and Technology Transfer).

Can the applicant’s affiliated college/department choose not to contribute to the patent filing fees?

 

A: Yes. However, this means the college/department will not be eligible for income distribution if the patent generates any income (in accordance with the NTU Administrative Guidelines regarding Research and Development Results and Technology Transfer).

For regular patent applications, if the application is rejected by the corresponding governmental authorities, how will the fees of filing a response be shared?

 

A: If a patent application is rejected by the corresponding governmental authorities, the patent firm will inform the applicant of the rejection and inquire if the applicant wishes to submit a response. If the applicant wishes to file a response, the fees of the first three responses will be shared according to the patent filing fee contribution rates; response fees after the third time will be paid by the inventor first. When the application is eventually approved, the fees (after the third time) will then be shared according to the patent filing fee contribution rates (in accordance with the NTU Administrative Guidelines regarding Research and Development Results and Technology Transfer).

Will thesis/dissertation defense and submission for master and Ph.D. students affect the process of patent application?

 

Since thesis/dissertation defense is a form of publication, if the thesis defense must be completed before the consideration of patent application, it is recommended that the following measures be taken to help maintain the confidentiality of technology.

 

1. Not issuing an announcement for the thesis/dissertation defense session on the Internet.

  

2. Holding a closed-door thesis/dissertation defense session to avoid disclosing the technology to non-specific persons.

 

3. Requesting all attendees of the thesis/dissertation defense session (including the student presenting the thesis/dissertation) to sign the Thesis/Dissertation Defense Attendee Non-Disclosure Agreement.

(The NDA may be downloaded at https://ord.ntu.edu.tw/w/ordntu/Student_20072015263587535)

Making the thesis/dissertation available for access in the library or online is also considered making the thesis/dissertation public. If confidentiality measures are required, please contact the University’s library for assistance.