For Foreign Associates
Working with us on Taiwan patent and trademark matters.
Chung Cheng Intellectual Property acts as Taiwan agent for foreign law firms and their clients before the Taiwan Intellectual Property Office (TIPO). We file and prosecute invention, utility model, and design patent applications and trademark applications, and we take over pending matters from another agent. This page sets out who handles your matter, how to send instructions, how we report, and how fees are quoted.
Last reviewed: Reviewed by Jack (Chieh-Kai) Yang
People
Who handles your matter.
Jack (Chieh-Kai) Yang has led Chung Cheng Intellectual Property since it was established in 2017. He handles Taiwan patent and trademark prosecution and strategy.
- Taiwan Patent Attorney (since 2017)
- Taiwan Trademark Agent (since 2014)
- Passed the USPTO Patent Bar in 2020 (not registered)
His profile gives his education and practice areas, and links to his entry on TIPO’s online patent agent information page.
Instructions
How to send instructions.
Please send new instructions and inquiries to info@cc-collab.com.tw with a short description of your matter; we will normally reply by email on the next business day.
Before we accept a new matter, we run a conflict-of-interest check. So that we can do this, please tell us the name of the applicant and of any opposing party, and describe in a few words the technical field or the goods and services involved.
The documents we ask you to sign and send are set out below.
Confidentiality
Under Taiwan’s Patent Attorney Act, a patent attorney may not disclose or misappropriate the content of a matter entrusted by a client. We keep confidential the facts and strategy of your matter, technical disclosures, trade secrets and unpublished research, and marks and designs before they are published. We treat this duty as continuing after the engagement ends.
The conflict check needs only the names of the parties and a short description of the technical field or the goods and services, so technical documents can wait until we have confirmed that we can act. If you would like a confidentiality agreement in place before you send them, we can provide one.
Reporting
How we report.
When we receive a notice from TIPO in your matter, we send you a copy of the original and tell you any time limit it sets. We normally add a short English summary and our recommendation.
We keep our own docket of the deadlines in the matters we handle and report them to you together with TIPO’s notices; we then act on your instructions.
Sample reporting letter
The matter is fictitious; every name, reference number, and date below is a placeholder. An actual report follows the notice and the matter, so its content and layout may differ.
Subject: [Client] | Office Action Report | [Our Ref.] | [Title of the invention]
ACTION REQUIRED | TIPO deadline: [date] | Please instruct us by: [date]
Dear [Name],
TIPO has issued an office action in the above application. A copy of the original notice (in Chinese) is attached, together with our English summary.
1. Summary of the office action
| Ground | Provision | Claims | Examiner’s point |
|---|---|---|---|
| Inventive step | [provision cited in the notice] | [claims] | [Reference 1] combined with [Reference 2] is said to disclose [feature] |
| Clarity | [provision cited in the notice] | [claim] | The term “[term]” is said to be unclear |
| No objection | — | [claims] | — |
2. Our recommendation
| Objection | Suggested response | Risk | Our initial view |
|---|---|---|---|
| Inventive step | Option A: amend claim [n] to add [the feature of dependent claim m] and explain the difference from the cited combination | Narrower scope | Recommended |
| Inventive step | Option B: argue without amendment | The examiner may maintain the objection | Possible, but we see it as the weaker route |
| Clarity | Replace “[term]” with wording taken from paragraph [no.] of the description | Low | Recommended |
3. Fees
[Our fee for each option is quoted here. Amounts are omitted from this sample.]
4. Deadline and what we need from you
- TIPO’s deadline to respond: [date]. The time limit set in TIPO’s notice governs.
- Please send us your instructions (Option A or B) by [date], with any comments from the inventors on [Reference 1].
- If you need more time, please tell us well before TIPO’s deadline, and we will confirm whether an extension is available for this notice.
Attachments: TIPO office action (copy of the original); English summary; cited references
[Signature block]
Where TIPO sends its notices
As a rule, TIPO serves its notices on the appointed agent, and service takes legal effect for the applicant when the agent receives the notice. Where TIPO sets a time limit in a notice, that notice governs.
Where an applicant has two or more agents, TIPO’s patent and trademark guidelines provide, in the same terms, that all of them are to be served; because each agent may act alone, service on any one of them is valid, and if the agents receive the document at different times, service takes effect when the first of them receives it.
Annuity payment notices
According to TIPO, its annuity payment notices are a courtesy rather than a legal duty, and the patentee remains responsible for paying on time; for a foreign patentee, the notices are sent only to the agent.
According to TIPO’s English FAQ for patents, non-residents cannot pay official fees to TIPO directly, whether by bank transfer, credit card or check; payment has to be made by an appointed representative who resides or is domiciled in Taiwan, such as a patent attorney.
Sources: TIPO’s patent examination guidelines, Part I, Chapter 15, and Procedural Examination Guidelines for Trademark Registration Applications, Chapter 14 (in Chinese); Administrative Procedure Act, Art. 71; TIPO’s patent Q&A on annuities: whether TIPO notifies patentees and when the notices are sent (in Chinese).
The time limits for patents and trademarks are listed in Taiwan patent and trademark deadlines at a glance.
Contact
Office hours and public holidays.
Office hours are Monday–Friday, 9:00 AM–6:00 PM (UTC+8). You can reach us by phone at +886-2-2232-0232 or by email at info@cc-collab.com.tw. Messages that arrive outside office hours or on a public holiday in Taiwan are normally answered on the next business day.
For an urgent matter, please call us directly. For time limits that end on a weekend or a public holiday in Taiwan, see How periods are counted.
Fees
How fees are quoted.
Fees are scoped and quoted per matter before work begins. The written quote lists each item and shows our service fees separately from official fees.
Documents
The documents we ask for.
Power of attorney
- Who signs. The power of attorney is signed by the applicant: an individual signs personally, and a foreign company may sign through its representative or another authorized signatory alone; a corporate seal is not required. Where an authorized signatory signs, TIPO’s patent and trademark guidelines call for a document showing the authorization or a declaration of authority. Please print the signatory’s name and title below the signature.
- Notarization and legalization. Taiwan’s patent and trademark laws and enforcement rules do not require a power of attorney filed with TIPO to be notarized or legalized; what they call for is a signed power of attorney stating the agent’s authority. TIPO may, where it considers it necessary, ask the applicant for documents proving identity or corporate status. This covers proceedings before TIPO only, not powers of attorney for court proceedings.
- Patents and trademarks. We normally ask for two powers of attorney, one for patent matters and one for trademark matters, because the special powers to be stated differ between the two. Each can be drawn to cover your later cases: for trademarks, one power of attorney may cover existing and future applications and related proceedings; for patents, it may cover all of your patent cases, with a copy filed in each case.
- A new company representative. Under TIPO’s patent and trademark guidelines, a change of a company’s representative does not affect a power of attorney already filed, as long as the appointment itself has not been changed; no new power of attorney needs to be signed or submitted.
- The signature on file. For certain acts that significantly affect the applicant’s rights, such as withdrawing an application or recording its transfer to another party, TIPO checks the applicant’s signature or seal against the one on file. Where the application form was signed only by the agent, the reference is the applicant’s signature on the power of attorney.
Sources: Enforcement Rules of the Patent Act, Arts. 2, 9 and 10; Enforcement Rules of the Trademark Act, Arts. 2, 5 and 6; TIPO’s notes on the patent power of attorney form, patent examination guidelines, Part I, Chapter 1 and Chapter 4, and Procedural Examination Guidelines for Trademark Registration Applications (TIPO pages in Chinese).
More detail is in Power of attorney for Taiwan patent and trademark filings.
The applicant’s Chinese name
The patent application form is completed in traditional Chinese, so a foreign applicant and each inventor need a Chinese name; a trademark applicant likewise gives its name in Chinese, in traditional characters. If you have filed in Taiwan before, please tell us the Chinese name used in your earlier cases so that we can keep to the same name. For a first filing, we suggest a Chinese name for your approval.
In a patent case, under TIPO’s examination guidelines, a foreign applicant that later wants to change only the Chinese translation of its name must file a request to record the change in that case; no supporting document is required. According to TIPO’s patent Q&A, the applicant’s name on the power of attorney for a patent application should match the name on the application form; if it does not, proof that both refer to the same entity is required.
Sources: TIPO’s patent examination guidelines, Part I, Chapter 2 and Chapter 3, TIPO’s patent Q&A on the applicant’s name on the power of attorney, and guide to the trademark application form (in Chinese).
What to send with a first patent filing is listed in the Taiwan patent filing checklist for foreign applicants.
Change of agent
Moving a pending matter to us.
To move a pending matter to us, you sign a new power of attorney and we file the request to change the agent with TIPO. Under TIPO’s guidelines, its letter recording the change is addressed to the new agent, with a copy sent to the former agent. Because an applicant with no domicile or business establishment in Taiwan must be represented, we file the change as one step rather than a removal followed by a new appointment.
- Patent cases. Under TIPO’s examination guidelines, a patent applicant may change its agent at any time. A change of agent, or of the agent’s authority, has no effect vis-à-vis TIPO unless TIPO is notified in writing (Enforcement Rules of the Patent Act, Art. 9(5)). To record a change of agent in a patent case, a request for change naming the new agent is filed with TIPO together with a power of attorney for the new agent; no new power of attorney is needed if the new agent is already named in the one on file. Where an agent has been designated, the request form may be signed by the agent alone.
- Trademark cases. A change of agent in a trademark application is made by filing a request for change with TIPO (Trademark Act, Art. 24), and the same applies to changes after registration (Art. 38(2)). Under TIPO’s guidelines for trademark applications, the applicant may change its agent at any time, but the change has no effect vis-à-vis TIPO unless TIPO is notified in writing. To change the agent in a pending trademark application, a request for change is filed with TIPO together with a power of attorney for the new agent; no new power of attorney is needed if the new agent is already named in the one on file. After registration, a change of agent is recorded by filing a request to change the registered particulars, with a power of attorney where an agent is appointed.
- Official fee. A request to change the agent is a fee-bearing request under the Regulations of Patent Fees. Under TIPO’s examination guidelines the fee applies when an agent not previously listed on the application form is added—for example, when agent A is replaced by agent B, or when agent A is discharged and agent B is designated afterwards—while a first designation of an agent, or the discharge of an agent as such, is not treated as a change of agent and carries no fee. For trademarks, a request to change the particulars of an application or registration is a fee-bearing request under the Fee-charging Standards of Trademark, and TIPO’s guidelines list a change of agent among the changes that carry the fee. In trademark cases, no fee applies to a change of the agent’s address or to removing an agent without appointing a new one; an applicant with no domicile or business establishment in Taiwan, however, has to appoint a new agent and pays the fee for the change of agent.
- Several cases at once. A change of agent can be requested for several cases in one filing. For patents, TIPO’s multi-case change forms, one for pending applications and one for granted patents, cover a change of agent on condition that all the listed cases have the same applicant or patentee (with identical co-owners in every case), that all of them end up with the same agent or the same group of agents, and that a power of attorney is attached. For trademarks, one request may cover two or more marks of the same applicant where the change is the same for each.
Sources: TIPO’s patent examination guidelines, Part I, Chapter 4 and Chapter 15, Procedural Examination Guidelines for Trademark Registration Applications, notes on the patent change request form, and multi-case change request forms for pending applications and granted patents (in Chinese); Enforcement Rules of the Trademark Act, Arts. 25 and 37.
See also Changing agents in Power of attorney for Taiwan patent and trademark filings.
Ground rules
Representation before TIPO: the rules.
These are the rules behind this page, as they apply to an applicant with no domicile or business establishment in Taiwan.
| Point | What applies |
|---|---|
| PCT | Taiwan is not a member of the Patent Cooperation Treaty (PCT). A PCT international application cannot be filed in Taiwan, and it cannot designate Taiwan or enter a national phase in Taiwan. See Is Taiwan in the PCT? |
| Madrid System | According to TIPO, Taiwan is not currently a contracting party to the Madrid System; Taiwan is also not on WIPO’s list of Madrid Union members. A Madrid international registration therefore does not cover Taiwan; trademark protection in Taiwan is obtained by filing an application for registration with TIPO under the Trademark Act. |
| Agent: patents | An applicant with no domicile or business establishment in Taiwan must designate an agent to file patent applications and handle patent-related matters before TIPO (Patent Act, Art. 11(2)). |
| Agent: trademarks | An applicant with no domicile or business establishment in Taiwan must appoint an agent to apply for trademark registration and to handle other trademark procedures before TIPO (Trademark Act, Art. 6(1)). |
| Receiving documents | An applicant with no domicile or business establishment in Taiwan must be represented by an agent and, under TIPO’s patent and trademark guidelines, may not instead designate a third party merely to receive documents. |
| Electronic filing | Patent and trademark applications and other procedures may be filed electronically (Patent Act, Art. 19; Trademark Act, Art. 13(1)). Electronic application documents filed under the implementing regulations (for patents, the Regulations Governing the Implementation of Filing Patent Applications and Services by Electronic Means; for trademarks, the Regulations Governing the Implementation of Filing Trademark Applications and Services by Electronic Means) have the same effect as written application documents (Art. 3 of each). An electronic filing is taken to be made at the time it is received by TIPO’s information system (Art. 14 of each). For patent filings, a transmission or payment is also deemed made where the user has received the system’s automatic confirmation of success even though the transmission was not in fact completed. |
| Point | What applies |
|---|---|
| Patent matters | Unless otherwise provided by law, only patent attorneys may act as agents in patent matters before TIPO (Patent Act, Art. 11(3)). Under TIPO’s examination guidelines, the persons eligible to act as agents are patent attorneys, attorneys-at-law, and holders of a patent agent certificate obtained before the Patent Attorney Act took effect. |
| Patent attorneys | Under Taiwan’s Patent Attorney Act, a person who has passed the Patent Attorney Eligibility Examination and obtained a Patent Attorney License under the Act may practice as a patent attorney (Art. 3); a patent attorney may begin practice only after joining the Patent Attorneys Association (Art. 6); and no one without a Patent Attorney License may use the title of patent attorney (Art. 13). |
| Scope of work | Under Article 9 of the Patent Attorney Act, a patent attorney may be retained to handle patent filing matters; patent invalidation matters; the assignment, trust, pledge, licensing, and compulsory licensing of patent rights; administrative appeals and administrative litigation concerning patents; patent infringement assessment; patent consultation; and other patent matters provided for under patent laws and regulations. |
| Trademark matters | A person acting as agent in trademark matters before TIPO must be domiciled in Taiwan and, since May 1, 2024, must also be either (1) a professional who may legally handle trademark agency matters, such as an attorney-at-law or a certified public accountant, or (2) a trademark agent registered with TIPO (Trademark Act, Art. 6(2) and (3); the two examples are from TIPO’s examination guidelines). |
Sources: the Acts and Regulations linked above (official English translations); TIPO FAQ on PCT applications; TIPO patent Q&A on PCT applications and designating Taiwan (in Chinese); TIPO trademark FAQ on the Madrid System (in Chinese); TIPO’s patent examination guidelines, Part I, Chapter 4 and Chapter 15, and Procedural Examination Guidelines for Trademark Registration Applications (in Chinese).
Resources
Filing checklist and reference pages.
Our Taiwan filing checklist (PDF) lists what to send for a filing in Taiwan. Five reference pages cover the points that come up in most matters:
- Is Taiwan in the PCT? How to bring a PCT-family invention into Taiwan
- Taiwan patent filing checklist for foreign applicants
- Power of attorney for Taiwan patent and trademark filings
- Taiwan patent and trademark deadlines at a glance
- How long does a Taiwan patent or trademark take?
For the practice areas themselves, see Patent and Trademark.
Send us your matter.
Please send new instructions and inquiries to info@cc-collab.com.tw, or use the contact form.