Further Study of Six-month Grace Period Practices in Taiwan

Yu-Li Tsai, Patent Attorney

ˇ˝ Bachelor of EE from National Taiwan University

ˇ˝ Master of Telecommunications from National Taiwan University

ˇ˝ IP Master from New Hampshire Law School (Franklin Pierce)

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1.      Current laws and practices:

Under Article 22(3) of the newest Taiwan Patent Act, an invention in a patent application will not lose novelty or inventiveness due to a prior publication if the patent application is filed within six (6) months from the date that the invention was disclosed in the publication and the applicant claims the six-month grace period at the time of filing.

The most essential part is the definition of ˇ§publicationˇ¨ in Article 22(3).  The Taiwan Patent Examination Guide sets forth a general rule that the form of the ˇ§publicationˇ¨ is not limited to being on paper but includes the internet or an on-line database.  Therefore, the ˇ§patent gazetteˇ¨ also meets the definition of publication under the Patent Act. 

However, the Taiwan Patent Examination Guide also sets forth an exception to this general rule for publication.  Specifically, the Guide stipulates that the published invention in Article 22(3) must be disclosed in the publication out of the volition of the applicant, and the reason for publishing the invention is irrelevant.  Therefore, both commercial publications and academic publications can be claimed for the grace period under Article 22(3).  However, if the invention is published in the patent gazette, its very publication is the result of the applicantˇ¦s application for a patent rather than the applicantˇ¦s volition, and so the grace period under Article 22(3) cannot be claimed. 

2.      Patent publication is not caused by the applicantˇ¦s volition?

The TIPOˇ¦s position that the publication of a patent application or patent may not be the result of the applicantˇ¦s volition is doubtful. 

First, every patent applicant clearly knows that a patent will finally be published (either pre-grant or post-grant).  Despite such knowledge, any applicant still file a patent application and cause the idea to be published in exchange for the exclusive rights from the patent.  It is clear that the publication is voluntarily made through the direct volition of the Applicant.

Second, it is unquestionable that an academic publication, such as the publication of a research paper, can be claimed for the grace period under Article 22(3).  A researcher (especially a university professor) usually submits his/her research paper to a publicly credible organization and applies for examination of the paper, and after the examiners of the organization approve the research paper, the research paper is published.  That is, the researcher allows his/her idea to be published in exchange for his/her academic standing or even a promotion.  Are there significant differences between a research paper and a patent application?  No, there are not.  There are only tiny differences, such as: a researcher is equivalent to an inventor/patent applicant, a publicly credible organization is equivalent to intellectual property office, and exclusive rights are equivalent to academic standing or promotion.  It seems unreasonable to discriminate between a patent publication and an academic publication.

In view of the above, the author of this article holds the position that the publication of a patent application or patent should be regarded as being the result of the applicantˇ¦s volition.

3.      Example of a PCT application

It should be noted that Taiwan is not a member of the PCT, so it is impossible to file a national phase PCT application in Taiwan.  The most common approach is to file a regular Taiwan patent application within 12 months of the priority date of a first-filed application. 

Here is an example of a PCT application which involves the issue of a grace period.

(1)   A Japanese application was first filed in Japan on May 30, 2013.

(2)   An international PCT application was filed in Japan on May 29, 2014.

(3)   The international PCT application was published on December 4, 2014 and prior to the publication of the Japanese application.

On May 10, 2015, the Client wanted to file an application in Taiwan and asked this firm for assistance.  However, it is obvious that because 12-month priority date (May 30, 2014) of the present application has lapsed, it is not possible to claim priority for the first-filed Japanese application any more.

However, it was noted that the Clientˇ¦s Japanese application and the international phase PCT application was published on December 4, 2014.  If the six-month grace period (ending on June 4, 2015) is applicable, then it may be worthwhile to try to file a regular Taiwan patent application.  Unfortunately, under the current Taiwan practices, the six-month grace period is applicable to patent publication.

In the end, the Client lost an opportunity to protect its innovation in Taiwan, and we lost an opportunity to serve the Client.

4.      Conclusion and prospects

It is believed that whether the publication of a patent application or patent can maintain the applicability of a grace period is a disputable issue.  The most essential parts are the definition of ˇ§publicationˇ¨ and the standard of the ˇ§volition testˇ¨.

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