Newsletter
New Measure in Managing Priority Claims of a Design Patent Application
The Taiwan Intellectual Property Office (TIPO) announced on 12 July 2019 a new measure in managing priority claims of a design patent application: "In the future, the examiner will not evaluate the validity of the priority claim of a patent application based on priority documents, unless he/she finds - through a search - that there is a pending patent application or prior art whose filing date or date of disclosure falls between the priority date and the filing date of the later-filed application. If no pending patent application or prior art is found, the TIPO, in principle, will publish all the priority claims the applicant asserts on the Patent Gazettes. This measure will come into effect on the publication date of volume 46, issue 22 of the Patent Gazettes (1 August 2019)."
Pages 3-5-3 and 3-5-4 of Chapter 3 of the current Patent Examination Guidelines stipulate the following regulations:
"(4) The design disclosed in the drawings of a design patent application is required to comply with the requirement of 'one design for one application.' Accordingly, a design patent application can only claim one priority date for the claimed design. Claim to multiple priorities or a partial priority should not be accepted."
"(4) The design disclosed in the drawings of a design patent application is required to comply with the requirement of 'one design for one application.' Accordingly, a design patent application can only claim one priority date for the claimed design. Claim to multiple priorities or a partial priority should not be accepted."
"(5) If a pending application or prior art - whose filing date or date of disclosure falls between the priority date and the filing date of the later-filed application - is found during the process of searching, it is required to check if the priority claim(s) is valid in view of the priority documents. In addition, reasons are required to be given if the priority claim(s) is deemed invalid. If necessary, the applicant should be notified and required to submit a full or part of Chinese translation of the priority documents. If such Chinese translation of the documents fails to be submitted, the priority claim(s) should not be accepted."
In the past, during the process of substantive examination of a design patent application, the TIPO would check to see whether the design disclosed in the claimed priority basic application is the same as that disclosed in the design patent application. If not, an Office Action requesting the applicant to respond would be issued by the TIPO. Where a design patent application claims multiple priorities, an Office Action requesting the applicant to select one of the priority claims would also be issued by the TIPO. In the future, the examination of the priority claim for a design patent application will be in accord with that of an invention patent application, namely, the priority claim(s) will not be substantively examined first. That is, an applicant will be allowed to claim multiple priorities. The examination of whether the priority claim(s) corresponds to the later-filed application will be conducted only if there is a prior-filed application or prior art whose filing date or date of disclosure falls between the earliest priority date and the filing date of the later-filed application (the same also applies to the proceedings of a cancelation action). If no such prior-filed application or prior art is found, the TIPO will publish all the priority claims the applicant asserts on the Patent Gazettes.
In the past, during the process of substantive examination of a design patent application, the TIPO would check to see whether the design disclosed in the claimed priority basic application is the same as that disclosed in the design patent application. If not, an Office Action requesting the applicant to respond would be issued by the TIPO. Where a design patent application claims multiple priorities, an Office Action requesting the applicant to select one of the priority claims would also be issued by the TIPO. In the future, the examination of the priority claim for a design patent application will be in accord with that of an invention patent application, namely, the priority claim(s) will not be substantively examined first. That is, an applicant will be allowed to claim multiple priorities. The examination of whether the priority claim(s) corresponds to the later-filed application will be conducted only if there is a prior-filed application or prior art whose filing date or date of disclosure falls between the earliest priority date and the filing date of the later-filed application (the same also applies to the proceedings of a cancelation action). If no such prior-filed application or prior art is found, the TIPO will publish all the priority claims the applicant asserts on the Patent Gazettes.