Priority Document Submission Requirement in the ROC (Taiwan)

07/14/2016

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We are writing to inform you of the new practice for submitting priority documents for new patent applications filed in the ROC (Taiwan).

 

I.          Deadline for Submitting Priority Documents

 

As you may have noted, according to the ROC Patent Act, the deadline for submitting a certified priority document for an invention patent application and a new utility model patent application is "16 months" from the priority date (or the earliest priority date in case of multiple priority claims), and that for a design application is "10 months" from the earliest priority date.

 

The above-mentioned 16-month deadline or  10-month deadline is non-extendible unless under one of the following situations:

 

(1)     If, within the 16-month deadline or 10-month deadline, the patent applicant can first submit to the Intellectual Property Office (IPO) a reproduced copy of the "cover page" of the needed priority document, the original 16-month or 10-month deadline can be extended for 2 months from the original deadline.

 

(2)     If the priority document cannot be submitted before the deadline for reason(s) not attributable to the applicant or any of its agents, we can institute a reinstatement procedure in accordance with Article 17 of the Patent Act and submit the required priority document when it becomes available. Such reinstatement procedure must be filed (1) within 30 days after the discontinuation of the reason(s) causing the delay, and (2) within 1 year from the original deadline.

 

In principle, unless under one of the above-mentioned exceptions, the priority claim will not be accepted by the IPO if the applicant cannot submit the required priority document within the 16-month or 10-month deadline.

 

II.         New Practice Regarding "Formality of Priority Documents"

 

In the past, for a patent application filed with priority claim, the applicant had to timely submit to the IPO an original of the certified priority document issued by the foreign patent office receiving the priority application. On 29 June 2016, the IPO announced an amendment of the Enforcement Rules of the Patent Act ("Rules"), which took effect on 1 July 2016. Under the amendment, the formality requirement for submitting a priority document has been relaxed (please refer to explanation below). The new practice applies to (1) patent applications filed on or after 1 July 2016, and (2) patent applications filed prior to 1 July 2016, for which the priority document(s) has (have) not been filed up to  1 July 2016.

 

According to Article 26 of the amended Rules, a patent applicant can exercise one of the following options with respect to "priority document submission requirement":

 

(1)     To submit an original of the certified priority document issued by the concerned foreign patent office;

(2)     To submit a certified priority document issued by the concerned foreign patent office in CD-ROM format;

(3)     To submit a certified priority document electronically issued by the concerned foreign patent office; and

(4)     To submit a reproduced copy of the original certified priority document issued by the concerned foreign patent office. 

 

 

According to the amended Rules, if Option (3) or Option (4) above is exercised, the patent applicant or its patent agent must store the concerned priority document into a CD-ROM and submit the CD-ROM file to the IPO. The patent applicant or its patent agent must simultaneously file a written declaration (which can be prepared by us directly) with the IPO, confirming that the document stored in the CD-ROM is a true copy of its original (the original certified priority document). If the applicant chooses Option (3) or Option (4) for a patent application, we will need the applicant to authorize us with respect to our filing a declaration stating that the submitted priority document is a true copy of its original.

 

 

III.       Our General Advice

 

The new practice as stated in Item II above applies to the following two categories of patent applications:

 

 (1) Patent applications filed on or after 1 July 2016, and

  (2) Patent applications filed prior to 1 July 2016, for which the priority document(s) has (have) not been submitted.

 

Therefore, for any patent application belonging to one of the above two categories, the applicant can send us the required priority document(s) in one of the following formats pursuant to Article 26 of the amended Rules:

 

(1)       An original of the certified priority document issued by the concerned foreign patent office;

(2)       A certified priority document issued by the concerned foreign patent office in CD-ROM format;

(3)       A certified priority document electronically issued by the concerned foreign patent office; and

(4)       A reproduced copy of the original certified priority document issued by the concerned foreign patent office.

 

If option (3) or option (4) above is adopted, the applicant should authorize us by e-mail with respect to our filing a declaration stating that the submitted priority document is a true copy of its original.

 

We hope that the above information is helpful to you. Should you have any questions, please do not hesitate to contact us.