TIPO accepts Electornic Priority Document
staring from June 2016
The Ministry of Economic Affairs, the superior agency governing Taiwan IP Office (TIPO), on June 29th, 2016, promulgated amendments to several provisions of the Enforcement Rules of the Patent Act (Enforcement Rules), Regulations Governing the Implementation of Filing Patent Applications and Services by Electronic Means (RPEM), and the Regulations Governing Submission of Foreign Language Application Documents (RFLA). Major changes made pursuant to the amendments are set forth as following.
1. Electronic Priority Document (EPDs)
For encouraging electronic filing for patent matters and implement the policy to build a paperless working environment, when claiming priority an applicant may, instead of submitting an original hard copy issued by a foreign patent authority, provide an EPD along with an affidavit manifesting the electronic version is identical to an original copy. The EPD practice is a result of amendments made to the Enforcement Rules and the RPEM.
An eligible EPD can be one of the following issued by a foreign patent authority:
(1)An electronic document stored in a DVD;
(2)An electronic document transmitted via Internet service; or
(3)An electronic document prepared by the applicant by scanning an original copy.
When submitting an EPD, as an alternative to electronic sheets, the applicant may submit a DVD or a DVD replicate issued by the foreign patent authority, or a self-burned DVD containing aforementioned Internet-transmitted or self-scanned document. In a circumstance where the applicant claims multiple priorities, the plurality of EPDs can be burned and stored in a single DVD where application number of each included priority shall be specified. Where there is more than one DVD submitted, the number of the discs shall be specified.
To remind, according to the currently effective Patent Act that the statutory period for submitting of a priority document is sixteen (16) months from the priority date, the applicant is therefore allowed to provide the EPD simultaneously upon filing or later within said 16 months.
As a take-home message for Tsai Lee & Chen’s clients, since China also accepts EPDs, for your convenience please provide us the electronic copies only when choosing to file in one or both of CN and TW.
2. Others
Other than electronic measures for priority documents, the amendment further reaches out to relax of formality requirement for patent filing in foreign language as well as the description requirement for design applications.
A specification filed in a foreign language, usually in a case where a foreign applicant claims priority, was to be made as a formal document for filing which cannot be substituted by either a priority document or a patent application publication, according to Article 5 of the RFLA. Now, with reference to international legislative examples and the Patent Law Treaty, for easing applicant’s burden during filing, the above noted Article 5 as a formality requirement is therefore deleted.
Besides, in the description of a design application where a computer icon or a graphic user interface (GUI) having continuously changing appearance is claimed, the order of changing shall be clearly specified. In the drawing of a design application the reference views are to be employed to specify the designed article or the design’s surrounding ambience.
for any questions relating to this topic, please contact us at cjchen@tsailee.com.tw
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