Question 12. Can we file a divisional application with claims that can be derived from the parent application before we pay the issue fee for the parent application?

Answer: Unfortunately, as soon as we received a notice of allowance of a patent application in Taiwan, there is no more opportunity to file a divisional application therefrom. Nevertheless, a divisional application in Mainland China is available within two months after the notice of allowance was issued.

Question 13. In the US, we can petition a waiver for the issuance of the parent application with the USPTO in favor of the filing of a CIP. Is this available in Taiwan and Mainland China?

Answer: There is no CIP system in Taiwan, neither is Mainland China. There is only an inner priority system within one year by which the later application owns priority at the expense of the life of the parent application.

Question 14. What is the requirements of the inner priority?

Answer: An inner priority is referred to a first locally filed application to be priority-claimed by the second locally filed application within one year from the filing date of the first locally filed application having no priority claim in itself. Specifically, if the parent application bears a priority claim or has a filing date older than 1 year, there exists no room for any kind of priority-claiming.

Question 15. Are there any special conditions for priority claim in Taiwan?

Answer: Since there is a political issue between Mainland China and Taiwan, there is no possibility to make a priority claim with each other.

Question 16. Do you have any advice regarding how to protect a US CIP application in Taiwan and Mainland China?

Answer: Since according to Paris Convention, a priority claim can only be made from the first filed application having not any priority claim, if the CIP application is partly directed to broaden the original claim scope, it is suggested to immediately file a divisional application in Taiwan or Mainland China with claims derivable from the parent application and then file a new application directed to the newly added subject matter in order to secure the possibility of seeking patented the broadened claim without being cited with the parent application during the prosecution of the later application(s).

Question 17. How to protect a PCT application in Taiwan?

Answer:   1. Any first filed PCT application younger than 1 year can be filed in Taiwan with a priority;
                2. Any PCT application older than 1 year cannot enjoy a priority in Taiwan but still can be filed before it is published 18 months from its
                   filing date;
                3. Any PCT application older than 18 months cannot seek protected in Taiwan.

Question 18. Can an applicant add a new claim set to the application during the prosecution?

Answer: In Taiwan, the applicant can add any new claim set derivable from the original disclosure during the prosecution. In CN, unless a voluntary amendment has been made before the substantive examination is made, it is impossible to add any new claim set derivable from the original disclosure, which can only be sought protected in a divisional application.

Question 19. (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.