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Newsletters

@Claiming Priority In Taiwan
Spring, 1998

Article 25 of the ROC Patent Law (hereinafter referred to as Article) stipulating that "an applicant claiming priority in accordance with the provisions of the preceding Article shall make such claim at the same time with filing application, shall also state in the application form the country in which the corresponding foreign application was filed, its filing date and its application number, and shall submit within three months from the filing date the filing document certified to be accepted by the foreign government.@@Failure to make such claim upon filing or to submit in due time will result in loss of priority."

@@@@The Patent Office still takes the position that failure to state the application number in the application form upon filing cannot enjoy the priority.@@This is sometimes detrimental to applicants in many countries in that an applicant (hereinafter referred to as Applicant) normally cannot ascertain an application number (hereinafter referred to as Application Number) for his original application (hereinafter referred to as Original Application) in one or two months (hereinafter referred to as Waiting Period) so that if a product (hereinafter referred to as Product) to be protected by the Original Application is to be announced in the Waiting Period, the Applicant had best not file his corresponding Taiwanese application (hereinafter referred to as Corresponding Application) by trying to claiming priority from Original Application in Waiting Period in that he will lose everything upon so doing.@@While this firm, Deep & Far attorneys-at-law, is confidently prepared to fight against such inhuman patent practice, it is strongly suggested that the local filing be effected after the Application Number becomes known, in that Product or Corresponding Application can still be duly protected in Taiwan by filing later after Waiting Period the Corresponding Application in Taiwan which can legally enjoy the priority and can still properly protect Product.

@@@@Our rationale of confidence in fighting against the current patent practice in this respect bases on that any law can survive only if it is humane.@@Waiting Period is a product of the human society of today's civilization.@@It is not the fault of Applicant to be unable to state in the Application Form Application Number.@@Instead, it is a necessitated regretful confinement against the human society for tomorrow's more advanced civilization.@@As everyone knows, the filing date is essential to the protection of the patent rights and sought to be secured as early as possible by every applicant.@@To this end, nearly every country recognizes the stamp of a domestic registered mail can serve as the base for claiming a filing date by which measure governmentally encouraging every national to create or invent is substantiated.@@Even Article requires an application number shall be stated in Application Form, Article shall be construed to mean in reality that Applicant shall try its all possible to state in Application Form Application Number and Applicant shall be legally assumed to have complied with Article if it has done so, rather than to be mechanically interpreted as that under all circumstances beneath the sun, Applicant shall state in Application Form Application Number without any exception, in order not to violate the human right or the constitution.

@@@@It is to be noticed that a Taiwanese local filing date is much different from the priority date than that in other countries.@@We will present this topic as follows by first representing the fact that normally, to secure a filing date in Taiwan, an Oath Form executed by the inventor and an Assignment Form executed thereby for transferring the inventor's rights to the applicant are indispensable documents.@@Certainly, Oath and Assignment can be combined together since they both are to be executed by the same inventor(s).

@@@@Surprisingly, through the introduction of priority claim into the Taiwanese patent practice, the lovely (only in respect of this topic) IPO (or past NBS) interprets Article to take that for successfully claiming the priority, requirements to be met consist of (1) making such claim at the same time with filing application, (2) stating in the application form the country in which the corresponding foreign application was filed, its filing date and its application number, and (3) submitting within three months the certified priority document.@@Specifically, according to IPO (or NBS), the priority date is successfully secured by only submitting therewith the specification (even in the version of a foreign language) and by making statements as set out in requirements (1) and (2), although the local filing date need not necessarily be secured.@@In other words, even Applicant has secured the priority date, Applicant still has not a local filing date since Applicant does not submit with its Corresponding Application Oath and Assignment.@@Nevertheless, Corresponding Application is legally valid and capable of duly enjoying the priority date without a local filing date.@@As is known, the patent right duration for Corresponding Application is to be counted from the local filing date so that in an extreme case, Applicant can delay as the law permits, i.e. 6 months from the effective filing date the submission of the required Oath and Assignment to secure the local filing date, by which the patent term is desiredly postponed while he still duly enjoys the priority.@@Certainly, Applicant must observe the one year (or 6 months for a design) period from the filing date of Original Application for claiming the priority by filing Corresponding Application even without a local filing date.@@Specifically, there are two local filing dates in Taiwan one of which is no later than one year from the filing date of Original Application and perhaps can better be renamed as priority-claiming date, while the other one of which could possibly be named as the real local filing date and can be petitioned to delay for a maximum of 6 months from the priority-claiming date without any sizable punishment as long as Applicant wishes.@@The only punishment is that if the priority claim is otherwise invalid and Product or Original Application has been published somehow during Waiting Period to defeat the novelty of Corresponding Application, Applicant will lose everything.

@@@@Such practice, if not strange, is soundly unique to the international patent practices.@@If this is a mistake made by IPO (or past NBS more exactly), from the legal viewpoint, we consider it a beautiful and wonderful error.@@If it was deliberately made out thereby, we cannot but feel deeply sorry for our past words and acts always reprimanding it as a mechanical, stubborn, stiff, numb, deadlocked, rigid, ossified and hardly savable authority.@@As mentioned earlier, in the past, executed forms are indispensable prerequisites for filing Corresponding Application.@@Even until now, a real local filing date cannot be secured for a domestic application without an executed Oath (and Assignment if there is an assignment between the inventor and the applicant) regardless of the nationality of the applicant.@@By such practice, NBS confers Applicant of foreign Application a better status than the applicant of the domestic application, which is diametrically opposite to IPO's (or NBS') past longstanding attitude.@@For example, Article 4 of Taiwanese Patent Law stipulates that "A patent application may be refused acceptance if filed by a national of a foreign country which together with Republic Of China did not both be parties to any international treaty for patent protection, or has not concluded therewith a treaty or agreement for reciprocal protection of patents, or has not engaged for patent protection with organization or institution an agreement approved by the Ministry of Economic Affairs, or refuses to entertain patent applications filed by Republic Of China nationals."@@By this Article, IPO (or exactly NBS) always rejects to open-mindedly issue an official letter expressing its will to entertain an application filed by a "suspect" country, e.g. Turkey and Thailand in the past and Romania at present, in order that an ROC national can apply for patent protection in a foreign country requiring IPO's (or NBS') official letter so-directed upon receiving an application from ROC national.@@The point IPO (or NBS) stands is that it will issue the official letter as requested immediately after the foreign country in issue has officially uttered similar message.@@As one can imagine, where each of two parties insists in its sincere feedback of amicably treating the opposite party only after the opposite party has first expressed its goodwill to that effect, the matter will be wrecked there and the situation will be thus deadlocked.@@It might be IPO's (or NBS') real consideration that if it issues the official letter first but the foreign country does not reciprocate as anticipated or desired, it might be imputed somehow.@@Such conscious defense is understandable and forgivable but questionable from viewpoints of generosity and dignity.

@@@@According to the legal theorem, e.g. the national treatment principle, it would appear it is arbitrary, baseless or inadequate for IPO (or NBS) to impart to Applicant of Corresponding Application a better legal status than to an applicant of a normal domestic application.@@It would thus appear that such practice originates from IPO's (or NBS') gross negligence.

@@@@It is the strong belief of this firm, Deep & Far attorneys-at-law, that the old Chinese saying "law cannot go beyond humanity" will play a more and more important role in legal construction and/or legislation so that unhuman laws, and legal interpretations, practices or measures will be rectified or become obsolete sooner or later, and/or conjunctively or separately.@@It is our goal to guide the laws of this country if what we find is rational, to urge the relevant authorities to give and/or render correct and/or human construction to and/or adopt humanized measures for practicing and/or enforcing the law if what we urge is persuasive, and to analyze for court judges, governmental organizations and/or countrymen that there always is a second way for bridging law and humanization if what this firm establishes presents no room for question.

@@@@So far as such practice is concerned, it is our intention to urge IPO (or NBS) to dispense with the practice of requiring Oath (and Assignment if applicable) as a must for securing a local filing date as such requirement is anachronistic, over-conservative, outmoded, outdated and unbaked by submitting this newsletter for IPO's (or NBS') reference.@@IPO (or NBS) should find by its adopting such practice it has erred in imparting a better legal status to a foreign national, which is practically impossible according to the international law practice in any country.@@Nevertheless, it would be hard for IPO (or NBS) to act in violation of such practice in the future not only because if so, IPO (or NBS) will not be different from making an international joke but also IPO (or NBS) cannot explain away how it reached its decision in adopting such practice.@@To rescue such situation or salvage ROC national from an IPO(or NBS)-set subordinate national status, it would seem the only way for NBS to drive is to give up the requirement of requiring Oath (and possible Assignment) as the prerequisite of securing a local filing date in order to at least bring the legal stand for the ROC national to be equal with that for nationals of foreign countries capable of enjoying priority claim in this country.@@Otherwise, it will violate Article 1 of the Patent Law stipulating that "this Law is enacted to promote, protect and utilize inventions and creations in order to further the industrial development," and Articles 15 & 22 of the ROC Constitution respectively providing "national rights on existence, work and property shall be protected" and "other national freedoms and rights not hampering social order or public interest shall be protected by this Constitution."@@As a governmental organization, IPO (or NBS) must legally and contitutionally behave itself, which is the primary reason why we confidently take IPO (or NBS) will eventually agree with our reasoning as above.

@@@@It is to be noticed that the Government of this country is retreated from Chinese Mainland in 1949 when defeated by Communist China and is stopped thereby from joining into any international convention so that this country is not a party to the Paris Convention and thus any one who would like to make priority-claim must be the national of one of countries having contracted a priority treaty (hereinafter referred to as Treaty) with this country.@@These countries include Australia, France, Germany, Japan, Liechtenstein, New Zealand, Switzerland and the US (hereinafter referred to as Priority Countries altogether) presently.@@It is a standard IPO's (or NBS') view that what have been contracted by this country and Priority Countries are bilateral rather than multilateral treaty so that any national in any one of Priority Countries can only claim priority from his home country but not any other country.@@Specifically, IPO (or NBS) takes:

  1. The priority claimant must be a national (hereinafter referred to as National) of any one of Priority Countries so that a national other than National cannot claim priority even from applications filed in Priority Countries; and
  2. A National can claim priority only from his home country.@&nbspIn other words, theoretically, only the home application can serve as the basis for priority claim.@@That is, it has been a loose interpretation of the treaty that a National files no home application but does file one or more patent application(s) in Priority Countries, he still can enjoy priority claim under the Treaty.

@@@@We must confess there is some kind of standing for IPO (or NBS) to so take.@@It nevertheless, is our opinion that as mentioned earlier, the "law cannot go beyond humanity," by the same token, we are never enjoined anyhow from humanly construing the law.@@We feel at ease and justified in interpreting Treaty loosely for IPO (or NBS) to introduce the following measures:

  1. Any national not limited to National can claim priority from any application(s) filed in Priority Countries; and
  2. Any National can claim priority from any application(s) filed in any country not limited to Priority Countries.

@@@@We have the following reasons for IPO (or NBS) to so do:

  1. Treaty is made for bilaterally securing benefits of priorities for nationals of contracting parties.@@Although Treaty in its major part is specifically referred to matters relating to mutual priority claims in contracting parties, a broad-minded introduction of the above-mentioned measures does not violate the destined objects and purposes that Treaty is contemplated;
  2. Countries (hereinafter referred to as Friend Countries) other than Priority Countries always accept ROC nationals claiming priorities from any country being a party to the Paris Convention.@@So far as reciprocity is concerned, it is unnecessary and there is no base for IPO (or NBS) to reject priority claims by nationals from those countries to protect the interests of ROC nationals;
  3. In Priority countries, ROC nationals can claim priority in any manner at their options.@@On the base of reciprocity, IPO (or NBS) has no space to prejudicially decline any National to claim priority from any country other than Priority Countries;
  4. If nationals of those countries including Priority Countries which accept priority claim made by ROC nationals report to their respective Patent Offices that IPO (or NBS) in Taiwan does not accept priority claim thereby as ROC nationals enjoy in their respective countries, the respective Patent Offices might be forced to initiating measures of rejecting in the future the priority claim from ROC nationals in a corresponding manner so that what IPO (or NBS) takes now is not to protect but is damaging the benefits of ROC and her nationals; and
  5. As is well-recognized, the existence of an organization shall be challenged if that organization frequently harms the interests of the national.@@The organization shall be organized otherwise if it finds reasons to subsist on.

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