PATENT APPLICATION PROCE-DURE SIMPLIFIED

09/01/2001

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To simplify patent application procedure, the IPO announced the following guidelines on 18 July 2001:

Oath and Assignment

Format of Oath and Assignment

An Oath or Assignment needs no longer bear both the signature and the seal of the inventor. The inventor (regardless of nationality) may choose to either sign or to affix his seal. The above two documents may also be combined into one.

Substitute documents on death of inventor

If an inventor dies, and the applicant is thus unable to submit an Oath bearing the signature or seal of the inventor, the inventor's heir does not need to sign an Oath. An Assignment bearing the signature or seal of the heir, documentary proof of inheritance (such as a will or a court judgment), and the inventor's death certificate, may be submitted as substi-tute documents.

Faxed copies and originals of Oath and As-signment

Where an applicant filing a patent application initially submits faxed copies of an Oath and Assignment, and subsequently submits the original Oath and Assignment within the pe-riod prescribed by the IPO, but the originals supplied are not the originals of the faxed documents, the date when the originals reach the IPO will be deemed as the filing date. However, if the applicant requests an exten-sion before the prescribed period expires, and the original documents corresponding to the faxed copies reach the IPO within the ex-tended period granted, the date on which the faxed copies reached the IPO will still be deemed as the filing date.

Substitute documents when Oath and As-signment are unobtainable

If at the time of filing, an applicant is unable to obtain an Oath and Assignment bearing the signature or seal of the inventor, he may in-stead submit an affidavit and related eviden-tiary documents as substitutes. The affidavit should state the title of invention and the basis for the applicant's right to apply for patent, and should also include a declaration of the ap-plicant's "willingness to bear all legal conse-quences." "Related evidentiary documents" means the following documents that are suf-ficient to establish the truth of the applicant's statements:

1.If it is asserted that a corresponding ap-plication has already been filed in another country: an original Assignment issued by the foreign authority with which the application was filed. In the absence of an original, a notarized copy of the same may be submitted.

2.If it is asserted that the claimed invention was made in the course of employment duties: the relevant original contract of employment, or evidentiary documents sufficient to show that the invention was made in the course of employment duties. In the absence of an original, a notarized copy of the same may be submitted.

3.Original documents sufficient to show that the applicant has lawfully acquired the right to apply for patent. In the ab-sence of originals, notarized copies of the same may be submitted.

4.Priority document sufficient to establish the truth of the statements made by the applicant.

5.Where it is asserted that the inventor was unable to sign or affix his seal due to ill-ness: the inventor's original hospital cer-tificate. In the absence of an original, a notarized copy of the same may be sub-mitted.

Deletion of an inventor

Where application is made before a patent ap-plication is irrevocably decided, to delete an in-ventor, the applicant need not also submit a consent letter from other co-inventor.

Status of a foreign company's branch office as an applicant

Where a patent application is filed by the ROC branch office of a foreign company, the foreign company should be named as the applicant. However, the person in charge of the ROC branch office may file the application as the company's representative. If the address of the company's place of business in the ROC is given as the applicant's address, the application need not be filed through a patent agent.

Power of Attorney

When a foreign applicant signs a Power of At-torney, there is no need to affix both a signature and a seal; either one is sufficient. The same applies when the applicant is an ROC natural person. Where the applicant is an ROC company or other ROC juristic person, the patent applica-tion and the Power of Attorney must bear the official corporate seal, but the parts to be signed by the legal representative of the applicant may be merely signed; the representative's personal seal need not be affixed.

Recordation of assignment of patent rights and patent application rights

Where an application is made to record the as-signment of patent rights or patent application rights, if the representatives of both parties are the same person, such recordation should be handled as follows:

If the assignment is between a company and its legal representative, the documents to be signed by the company need not be further signed by the representative; in the case of a company limited by shares, execution of documents by the supervisor of the company is sufficient; in the case of a limited company, execution of documents by a shareholder not executing business operation is sufficient.

If the assignment is between companies, and the legal representatives of the assignor and assignee are the same person, the documents to be signed by the assignor need not be fur-ther signed by its representative; in the case of a company limited by shares, execution of documents by the supervisor of the company is sufficient; in the case of a limited company, execution of documents by a shareholder not executing business operation is sufficient.

Recordation of inheritance of patent applica-tion rights or patent rights
Where there is more than one heir, but the ap-plication for recording inheritance is made by only one or only some of the heirs, in addition to an application form, death certificate, documents evidencing inheritance, inheritance hierarchy chart, and the requisite fee, the heir submitting the application must further submit any one of the following documents:

Evidentiary documents issued by a court, evi-dencing that the other heirs not named in the application for recordation have declared their abandonment of inheritance;

A notarized copy of the deceased's will, based on which the heirs to patent application rights or patent rights can be clearly identified;

A partition of inheritance agreement signed by all the heirs, as well as the certificate of seals of all the heirs. The above agreement should clearly list the heirs to whom the patent ap-plication rights or patent rights devolve.

If an heir who wishes to record the inheritance of a patent application right or a patent right is unable to submit any of the above documents, all the heirs should first apply jointly for rec-ordation of the inheritance, and then apply for recordation of assignment of said right to the heir wishing to inherit.

Contracts

Where the documents to be submitted in support of any application include contracts, and such contracts are in use for other purposes, applicants may submit notarized copies instead.

Procedure for patent file history checks

Where an applicant or his agent visiting the IPO to conduct file history checks, the applicant or agent must carry his original identity document for inspection. The IPO will no longer make or retain photocopies of identity documents. If the applicant or agent does not bring his personal seal, he may sign instead.

The above simplified procedure has already taken effect, and it should make applications in patent-related matters more convenient.