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Question
1(Foreing filing license): We have an application for filing in the
United States Patent Office by tomorrow for a company in the United
States that has a sole Taiwan inventor residing in Taiwan. Please
let us know by immediate return e-mail if a foreign filing license
will be required in order for us to file this utility application in
the U.S. Patent and Trademark Office by the tomorrow's deadline.
Please also advise if a translation of the text must be provided to
your office should a foreign filing license be required. In the
event that the license cannot be obtained on short notice, is it
possible for us to file a U.S. provisional application without
benefit of a foreign filing license and then follow up with our
utility application at a later date?
Answer: Since Taiwan does not
adopt or require the foreign filing license system, you can file a
US utility application without the obtainment of a foreign filing
license from Taiwan Intellectual Property Office, even if the sole
Taiwan inventor resides in Taiwan.
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Question
2(Divorce Agreement): I am an attorney admitted to practice law in
New York and I am handling a matter outside the scope of my
practice.
I would greatly appreciate any assistance in this area. I
understand that one of your areas of practice is marriage/divorce.
I
would like to obtain information on the validity and enforcement of
a foreign divorce agreement filed
in Taiwan.
The following background information
on this case.
Husband and wife were married in Taipei, Taiwan
on 8/15/81, left
Taiwan and moved to New York on 8/24/81.
On January 16, 1988, both parties entered into a divorce agreement
and file this agreement with the household registration. On
the application for a divorce, both parties listed that a divorce
was filed in New York.
A divorce was never filed in
New York.
As Per the divorce
agreement, the wife relinquished her rights to the cooperative
apartment that she jointly owned with her husband.
The Cooperative board refuses to recognize the validity of the
divorce agreement stating that the wife must sign several documents
relinquishing her rights.
The Board further states that it is not obligated to recognize this
agreement since they were not a party to the divorce agreement.
I have presented the divorce agreement, the household registration
with affidavits verifying the truth and accuracy of the
translations.
The whereabouts of the wife are unknown.
The husband has been residing in the cooperative apartment since
1981 and to date, he has paid all the maintenance charges, and other
additional fees since that time.
The husband can not afford to hire a private investigator and at
this point, the wife's location is not germane to this issue because
the agreement clearly shows that she has relinquished her rights to
the apartment.
In New York, the court
will recognize and enforce the "bilateral" divorce of a foreign
country as a matter of comity stated in Rosenstiel v. Rosenstiel, 16
N.Y.2d 64 (1965).
The questions that I have are
what additional steps, if any, is necessary to enforce the divorce
agreement in New York, whether a divorce must now be filed in New
York and whether a court action should be filed in either Taiwan or
New York to enforce the validity of the agreement.
I have contacted the Attorney General's office, the Tai Pa Economic
and Cultural Office and your office to ascertain whether their a
specific procedure
that I must follow in order to be in compliance with the
Taiwan government and/or New York . Dear
Jordan, Esq.:
Answer: Your question needs be
dealt with only by New York laws as
long as the divorce agreement filed with the household registration
is genuine.
Please try at your end to find out the answer from your laws.
At the worst case, we can help you to obtain a court decision
affirming that the wife has relinquished her rights to the
cooperative apartment that she hointly owned with her husband.
Our fees for the court action might be around US$3,000 for the first
instance.
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Question
3(Patent Prosecution Procedures ):
--Regarding the general patent application prosecution procedures
(including examination procedures):
The required forms for a patent application subject to an earlier
publication 18 months after its filing date or the priority date, if
appropriate, include a copy of the assignment and an original (general)
power of attorney. The application will be examined only after request
for substantive examination. It costs 8 months to 2.5 years to receive a
first official communication.
The first communication might be a notice of allowance, a letter
requiring amendment or a pre-notification that the Office is prepared to
reject an application due to some kind of reasons or cited references.
We can file a response to overcome this pseudo-action. If we fail to
rectify the issues raised in the pre-notification, a formal office
action will be forthcoming (from 3 months to 1 year after response). We
then need to petition a re-examination conducted by another examiner for
the application before the IPO. It is still possible for us to receive
within 6 months to 1.5 years a pre-notification for a reexamination
action.
After we receive the reexamination action, we need to appeal the case to
the Board of Appeals in the Ministry of Economic Affairs where it will
cost about 6 months and the success rate is about 25%. Thereafter, we
should appeal the case to the Administrative Higher Court where it will
cost about 1 to 2 years and the success rate is lower than 5% and then
to Administrative Supreme Court where it will cost about 1 to 3 years
and the success rate is less than 1%.
--Regarding kind of application (such as provisional, utility, etc.)
We do not have the provisional application system but we could file a
second application claiming the inner priority from the first
application. We also have the utility model patent, an application of
which is subject only to formality examination and could be registered
in 6 to 10 months for 10 years protection from the filing date. We also
have, for 12 years protection from the filing date, the design patent,
an application of which is examined to its originality and ornamental
features and could receive a first official communication in 1 year with
the subsequent procedures similar to those for a patent application.
--Regarding whether there is a fast track to expedite the examination
procedure or the fastest way to get a patent granted Article 39(1) of
the Patent Law provides that ¡§if an invention patent application is
commercially practiced by a non-patent applicant after earlier
publication, the patent-dedicated office may preferentially examine it
upon petition.¡¨ This is the only basis for an application to be
proceeded in a fast track.
--Regarding average time consumed for examination: Having been
incorporated hereinbefore.
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