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Newsletters

Deep & Far Newsletter 2014 ©
November, 2014

Proposed Act to Implement Procedures to File a Patent Application with a Foreign Language Document

Wei-Ting Chou, Patent Director, Patent Group I

Master of Agricultural Engineering, National Taiwan University

Bachelor of Medical Engineering, National Cheng Kung University

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Article

Introduction

1. This Act is enacted according to the stipulations in Article 145 of the Patent Law (briefly referred to as the Law hereinafter).

1. This is the legal basis for this Act.

2. Foreign languages for the foreign language documents, according to the stipulations in Paragraph 3 of Article 25, Paragraph 3 of Article 106 and Paragraph 3 of Article 125 of the Law, are limited to Arabic, English, French, German, Japanese, Korean, Portuguese, Russian, and Spanish.

   If there is incompliance with the preceding paragraph, the patent-dedicated office shall notify the Applicant to make a supplement by a deadline, and the date on which the supplement is made shall be deemed as the date when the foreign language document is submitted.

1. Paragraph 1 stipulates what languages can be used in a foreign language document.   These stipulations are made with reference to the following Patent Cooperation Treaty (PCT) publication languages: Arabic, Chinese, English, French German, Japanese, Korean, Portuguese, Russian, and Spanish.

2. Paragraph 2 stipulates that, if the language used in the foreign language document is not in compliance with the stipulations above, the date on which the supplement is made shall be deemed as the date when the foreign language document is submitted.

3. If two or more foreign documents are submitted for the same patent application, the filing date shall be based on the date of the earliest submitted foreign language document.  The date when the latest foreign language document is submitted shall be deemed as the filing date if the Applicant states so.

If the documents in the preceding paragraph are submitted on the same date, the patent-dedicated office shall notify the Applicant to select which document is to be submitted by a deadline.  If the selection is not made by the deadline, the application shall not be accepted.

1. In practice, it is possible that the Applicant could submit two or more foreign language documents.  Because the foreign language document is a document to secure the filing date, if two or more documents are submitted in sequence, the date of the earliest submitted document shall be deemed as the filing date.  However, the date of the latest submitted document can be deemed as the filing date if the Applicant states so because this statement will affect no benefits of a third party or the public.  Accordingly, Paragraph 1 stipulates that the filing date can be alternatively based on the date when the latest foreign language document is submitted.

2. If the Applicant submits two or more foreign language documents on the same date: there will be a burden to check whether there is consistency thereamong; there will be an issue regarding which document shall be used as a basis to check whether an amendment or mistranslation correction goes beyond the disclosure of the foreign language document.  Accordingly, there is stipulated Paragraph 2 are made.

4. The foreign language document for the invention patent application shall include a specification, at least one claim, and a necessary drawing.

   The foreign language document for a utility model patent application shall include a specification, at least one claim, and at least one drawing.

   The foreign language document for a design patent application shall include one or more drawings as stipulated, and a design title.

1. If the Applicant files an application with a foreign language document, the descriptions to be made in the foreign language document and the application documents shall refer to Paragraph 2 of Article 25, Paragraph 2 of Article 106, Paragraph 2 of Article 125 of the Law and Paragraph 5 of the Patent Law Treaty.

2. According to the stipulations to secure the filing date of a filed invention or utility model patent application in certain countries, it might not be necessary to provide a claim.  However, in this country, at least one claim shall be provided to secure a filing date of the filed invention or utility model patent application.

3. If a design application is filed with a foreign language document including a design title and the one or more drawings, the filing date of this application can be secured.

5. The Applicant cannot submit a patent gazette in the foreign language or a priority document instead to serve the foreign language document instead.

1. If an application is filed with a foreign language document, it is not premised on claiming an international priority.  In addition, if one or more priorities are claimed, the foreign language document to be submitted shall include the technical contents of the corresponding priority applications.  The priority documents mainly verify that the earlier application in the foreign country has the same technical content as that of the application filed in this country.  Accordingly, the priority document and the foreign language document may be similar to, but cannot replace each other.

2. In the respective foreign country, the specification, claims, and drawings of the application accompanied in the patent gazette are used by the patent-dedicated office to publish or announce the right scope and thus are different from and cannot replace the application document, and vice versa.

6. This Act is effective when this Law is effective.

This is to designate when this Act is effective.


Reported by Wei-Ting Chou

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