"*~FAQs for Patent~*"

Priority Document and Its Submission

Any first filed US provisional application can serve as a base for priority claim in Taiwan. A later filed regular US patent application can also serve as a priority claim base in Taiwan. Specifically, as long as the first filed US provisional application is not identical to the later filed regular US patent application and both of them have not expired the 12-month priority periods, a Taiwan patent application can successfully claim priorities from the first filed provisional application and the derived regular application simultaneously. Further, what is critical is whether the US provisional application or the US regular application is first filed. In other words, it is unimportant whether the invention has again been filed in any other countries before filed in Taiwan. Specifically, as long as the first filed provisional application and the first filed regular application have not expired the 12-month priority periods, they can be validly claimed in Taiwan. Speaking otherwise, if after filing the first filed US provisional application, a German patent application is filed and then a US regular application identical to the German patent application but claiming the priority of the first filed US provisional application, a Taiwan patent application must or can claim priorities from the first filed US provisional application and the German application (but not the US regular application since it is not the first filed one in this case) as long as both the first US provisional application and the German patent application have not expired their 12-month priority periods.

According to the Patent Law, the four months period for supplementing the priority document from the filing date is the statutory deadline which is different from the deadline designated/prescribed/ruled by the IPO for submission deadline of the six-month period. That is, it will be only possible for us to have the two-month extension for supplementing original of executed power of attorney, assignment, the Chinese text and relevant required documents if the four-month period from the filing date is expired. Contrary to these documents, the statutory deadline for supplementing the priority document(s) with a four-month period from the filing date is inextensible subject to no discretion according to the Patent Law.

In order to bypass the above draconian/strict rule with no flexibility, in the past, in emergency, we will submit the full fax copy of the priority document firstly by the deadline to satisfy the requirements of the four-month period and then supplement its original slightly later, for which the IPO will usually accept to maintain the priority claim.

If the Applicant cannot submit with the IPO within the statutory time frame owing to unavoidable factors, e.g. the home Patent Office loses its file or has a file room moved, it can only petition a reinstatement according to the Patent Law. It will be accordingly possible to petition or exercise a kind of special procedure in this country by submitting the certified statement explaining the delay for the required priority document from the foreign Patent and Trademark Office. That is to say, for petitioning successfully a reinstatement, we must submit the certified statement from the foreign Patent and Trademark Office explaining the delay for the required priority document, to clarify such miss was caused by the foreign Patent and Trademark Office rather than the applicant and/or its counsel. In addition, it is also necessary for us to submit the required priority document together with the petition of the reinstatement within 30 days following the date the reason for the reinstatement disappears.

Alternatively, it is usually accepted by the IPO for us to submit a certified statement by a Patent Office (e.g. WIPO) stating the priority document has been indeed petitioned on a certain day earlier than the supplementing deadline for substituting the certified statement by the WIPO stating the reasons for not providing the document in the preceding paragraph so that we could have additional two months to submit the priority document.

Also, it will be very pleasant if we can timely submit the fax copy of the front page and the full text of the priority document (not the first page of the application, the request form or the filing receipt of the priority document request) for the application firstly. After then, we will supplement its original with the IPO immediately when we receive it.

The priority document(s) could be submitted via CD if together with the print out of the electronic certified copy thereof for substituting the certified hard copy of the priority document.

Novelty Exceptions

Under the Taiwanese patent law, the novelty grace period in the case of prior disclosure of the invention is limited to some situations as stipulated by relevant provisions as follows:

“The limitation to provisions of items in the preceding paragraph shall not apply to any invention having any case of items in the preceding paragraph through any of the following cases with a patent application being filed therefor within six months from the date on which its fact occurs:

      1. Due to research or experiment.
      2. Having been displayed in an exhibition sponsored or approved by the government.
      3. Disclosed without the intention of the applicant.

Upon claiming the application of Item 1 or Item 2 in the preceding paragraph, the applicant shall state the fact and its year, month and date upon filing and submit proving documents in the period specified by the patent-dedicated office.

An invention, even without cases listed in the first paragraph, shall not be granted an invention patent under this Law, if easily achievable by one having ordinary skill in the pertinent art by utilizing the existent technology prior to filing.”