Power of attorney for Taiwan patent and trademark filings

An applicant with no domicile or business establishment in Taiwan must be represented by an agent before the Taiwan Intellectual Property Office (TIPO), in patent and trademark matters alike (Patent Act, Art. 11(2); Trademark Act, Art. 6(1)). A power of attorney signed by the applicant must be filed with TIPO. Taiwan’s patent and trademark laws and enforcement rules do not require that power of attorney to be notarized or legalized. As a rule, a scanned copy of the signed document is enough for us to file, and the power of attorney may be filed after the application, within the period TIPO sets in its notice.

Patent and trademark matters follow different rules on several points. Where they differ, each is set out separately below.

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. Please print the signatory’s name and title below the signature.

Where an authorized signatory signs, TIPO’s patent and trademark guidelines call for a document showing the authorization or a declaration of authority.

The agent signs as well. Under TIPO’s guidelines, a power of attorney is signed by the applicant and the agent; if only the applicant has signed it, it is still accepted where the agent has signed the application form.

For patent matters, the power of attorney may be signed on paper or with electronic signing software, provided the signature can be compared with the application data. If TIPO has doubts about a software-made signature, for example one that looks no different from typed text, it asks for the electronic signature audit trail or a paper-signed document.

The applicant’s signature on the power of attorney is also what TIPO refers to later. 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.

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.

Scanned copy, original and translation

As a rule, a scanned copy of the signed power of attorney is enough for us to file; it is filed with a statement that it is identical to the original. Please keep the signed original: TIPO may ask to see it, and we will ask you for it if TIPO does.

The official position behind this is stated separately for the two fields:

• Patents. A power of attorney should in principle be the original, but a copy is accepted if the party states that it is identical to the original (Enforcement Rules of the Patent Act, Art. 4). In an electronic filing the power of attorney may be filed as an electronic file stated to be identical to the original, and TIPO may require the original for verification where it considers it necessary (Regulations Governing the Implementation of Filing Patent Applications and Services by Electronic Means, Art. 11).
• Trademarks. An image file of the signed power of attorney is submitted with an electronic filing; TIPO may, where it considers it necessary, require a paper document proving that the agency relationship continues.

Under TIPO’s patent and trademark guidelines, a power of attorney written in a foreign language must be filed with a Chinese translation. The translation does not need to be signed, and the agent’s authority is determined by the original-language document.

Filing the power of attorney after the application

A power of attorney may be filed after the application, and TIPO sets the period in its notice. The periods in the table come from TIPO’s examination guidelines and apply as a rule. In every case the period stated in TIPO’s notice governs.

Application	Period TIPO sets, as a rule	Extension	Basis
Invention or design patent	Four months	Two months, on a reasoned request filed before the period expires	TIPO’s patent examination guidelines
Utility model patent	Two months	Two months, on a reasoned request filed before the period expires, and then, on a further reasoned request, another two	TIPO’s patent examination guidelines
Trademark, where the applicant has no domicile or business establishment in Taiwan	Two months	May be requested, with reasons, before the period expires; TIPO decides whether to grant it	TIPO’s trademark guidelines

For patent applications, the period and any extensions together do not, as a rule, exceed six months.

If the power of attorney of an applicant with no domicile or business establishment in Taiwan is not filed within the period TIPO has set, the application is dismissed; a late filing made before TIPO issues the dismissal is still accepted (Patent Act, Art. 17(1); Trademark Act, Art. 8(1)).

For patent matters, a power of attorney filed after the application may bear a signing date later than the filing date; TIPO generally accepts this.

These are periods that TIPO specifies in a notice. Periods fixed by the Patent Act or the Trademark Act itself, such as the period for filing priority documents, are a different matter: they cannot be extended at the applicant’s request, unless, for patents, the Patent Act itself provides otherwise. Those periods are set out on our page on Taiwan patent and trademark deadlines.

Wording TIPO looks at

A patent power of attorney must specify the scope of the agent’s authority and the address for service (Enforcement Rules of the Patent Act, Art. 9(1)). A trademark power of attorney must specify the powers delegated to the agent (Enforcement Rules of the Trademark Act, Art. 5(1)). Beyond that, the wording to check is the list of special powers, and the patent list is not the same as the trademark list. We send our power of attorney forms with our reply to a new instruction.

Patent matters

For patent matters, an agent needs special authorization to designate or discharge an agent; to withdraw a patent application, a divisional application, a converted application, a request for reexamination, a request for post-grant amendment, or an invalidation action; or to abandon a patent right (Enforcement Rules of the Patent Act, Art. 10).

TIPO’s patent examination guidelines say these special powers may be written into the same power of attorney; where the power of attorney does not list them one by one, one that expressly includes the power has to be filed when the agent later takes such a step, for example a withdrawal. The guidelines give an example: a general grant covering “all procedures under the Patent Act and other laws” does not authorize the agent to withdraw an application.

Trademark matters

For trademark matters, the special powers are appointing or removing an agent, restricting the designated goods or services, withdrawing an application, and abandoning a trademark right (Enforcement Rules of the Trademark Act, Art. 6). Under TIPO’s trademark guidelines, if the power of attorney does not state them, one that does has to be filed when the agent later takes such a step.

Why we ask for two powers of attorney

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:

• Trademarks. One power of attorney may cover one or more existing and future applications and related proceedings (Enforcement Rules of the Trademark Act, Art. 5(2)). Under TIPO’s trademark guidelines it stays valid until the agent is removed.
• Patents. A power of attorney may be drawn to cover all of the applicant’s patent cases, but as a rule a power of attorney still has to be filed in each case so that TIPO can confirm the agency relationship for that case. TIPO’s patent Q&A notes an exception: a divisional application handled by the same agent as the parent application needs no new power of attorney.

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.

Copies for later filings

A copy can stand in for the original in later cases. What is written on the copy differs between trademarks and patents.

• Trademarks. For a later trademark filing that falls within the scope of a power of attorney already on file with TIPO, a copy may be filed in place of the original (Enforcement Rules of the Trademark Act, Art. 4). Following TIPO’s application guide, the copy is declared identical to the original and states the number of the case in which the original was filed. The same guide adds that TIPO may ask for proof that the agency relationship continues where it considers it necessary.
• Patents. The power of attorney filed in each later case may be a copy stated to be identical to the original.

Trademark renewals

A trademark renewal filed through an agent needs a power of attorney. Where the one already on file with TIPO covers renewals, a copy can be used; we check the power of attorney you gave us earlier and tell you whether a new one is needed. The copy is prepared as described above: declared identical to the original and stating the number of the case in which the original was filed.

Changing agents

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. A request to change the agent is a fee-bearing request under the Regulations of Patent Fees (Art. 8). 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. Under the same guidelines, 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.

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. A request to change the particulars of a trademark application or registration is a fee-bearing request under the Fee-charging Standards of Trademark (Art. 6), and TIPO’s guidelines list a change of agent among the changes that carry the fee. 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.

In a pending trademark application, the applicant removes its agent by notifying TIPO in writing. For an applicant with no domicile or business establishment in Taiwan, however, TIPO’s guidelines provide that a removal filed without appointing a new agent would breach the requirement to be represented: TIPO will notify the applicant to file a change of agent, and if this is not done in time the request to remove the agent is not accepted.

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 (Enforcement Rules of the Trademark Act, Arts. 25 and 37).

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For how we take instructions and report, see For Foreign Associates. The documents for a new patent application are listed on the Taiwan patent filing checklist; the main points on the power of attorney are also on page 2 of the Taiwan filing checklist (PDF). See also our patent and trademark practice pages.