If a patent applicant fails to submit the priority certificate issued by the patent authority by the deadline and instead provides a photocopy of the priority basis application as a substitute, can this be considered proof of priority? The Supreme Administrative Court did not think so in its judgment No. 111(2022)-Shang-No. 492 dated May 25, 2023.

 

The issue in this case is that Article 29 of the Patent Act does not clearly describe the content of "acceptance documents." However, the relevant provisions of the Patent Act Enforcement Rules and Patent Examination Guidelines restrict the priority certificate to only the original documents issued and signed by a foreign patent authority or WTO member. The question is whether these provisions go beyond the authorization of the parent law.

 

The Supreme Administrative Court clarified that Articles 28 and 29 of the Patent Act were formulated with reference to relevant provisions of the Paris Convention, and the acceptance documents mentioned in its ruling require priority certification by the patent authority of the country where the priority basis application is filed. Therefore, documents such as application receipts, electronic receipts, acceptance notifications, patent certificates, approval documents, patent gazettes, or photocopies of the priority basis application from a foreign patent authority or a WTO member do not qualify as proof of priority. The applicant also cannot substitute them with copies of priority certificates notarized or certified by courts or other authorities.

 

From the above, it can be seen that even if the documents submitted by the patent applicant contain the content of the priority basis application, if they are not priority certifications issued by the foreign patent authority, they cannot be used as proof for claiming priority.