A Foreign Filing Receipt Cannot Be a Substitute for a Priority Document
Entegris Inc. filed a patent application for an invention entitled “substrate container with magnetic latching assistance” which claimed priority to an earlier US filing. In response to TIPO’s request for a priority document, Entegris submitted a Filing Receipt and an Electronic Acknowledgement Receipt in lieu of a regular patent specification for the US filing. Even though they were officially issued from the USPTO, TIPO declined the receipts as a substitute for the priority document. TIPO subsequently made a decision in which the Taiwanese application was deemed to have claimed no priority right. Entegris sought legal remedies in an attempt to revoke TIPO’s decision and to revive the priority claim. After respective reviews by the Ministry of Economic Affairs and the Taiwan IP Court, the case reached the Supreme Administrative Court (SAC). The SAC concluded the dispute by ruling that a foreign filing receipt cannot replace a priority document.
Article 29 of the Taiwan Patent Act is the fundamental rule for the formality requirement of a lawful foreign priority claim. When an applicant’s first patent application is filed in a WTO member country which reciprocally accepts claims of priority rights from nationals of Taiwan, ROC to the applicant may claim priority for his/her Taiwanese patent application for the same invention. To enjoy a priority for an earlier-filed foreign application, a Taiwanese counterpart must not only be duly filed within 12 months but also specifically declare the priority date, the jurisdiction where the priority application was filed, and the application number of the priority application. Additionally, the application must submit a “certified copy of the priority application issued from the foreign patent authority,” within 16 months from the earliest priority date. In case of a violation of the above rules the priority claim will be deemed not to have been made, as prescribed in Article 29III of the Patent Act. However, the Patent Act does not specify what can be constituted as an admissible priority document.
According to TIPO, an admissible priority document has to contain the minimal particulars including an issuance date of the priority document, the application’s official application date and the application number assigned by the foreign patent office, as well as the technical disclosure with specification and drawings; all of which should be sealed by the foreign patent agency. The applicant’s failure to comply with this rule for an admissible priority document resulted in ineligibility of a priority claim.
In the trial, the Taiwan IP Court (IP Court) leaned towards the applicant Entegris. The IP Court mainly reasoned that TIPO’s minimal formality requirement went beyond the statutory regulations under the Patent Act, the Enforcement Rules of the Patent Act and the Patent Examination Guidelines. The Patent Act only requires submission of an application document that has already been docketed in a foreign receiving office. The Enforcement Rules of the Patent Act further requires the application document issued by a foreign office to be an original copy; if a photocopy is submitted within the statutory time frame, an original copy should be provided later by a designated due date. Neither the two statutes, however, require the same minimal formality as TIPO does.
Entegris also argued by taking reference to MPEP of the USPTO, in which information of items such as a filing receipt includes an application number, a filing date and a confirmation code. Only when a particular application has sufficed minimal filing requirements to secure a filing date, will the USPTO assign an application number and the confirmation code. Therefore, presenting a USPTO filing receipt demonstrates that a US filing is complete at docket. This argument was supported by the IP Court.
In addition to the foregoing rationale, Entegris found that TIPO had accepted filing receipts from other patent offices submitted from some applicants as the certified priority documents, and had given them opportunities to rectify. The IP Court held that, based on the equal treatment doctrine under the Administrative Procedure Act, TIPO should have granted Entegris an opportunity for rectification within a reasonable time frame.
The Supreme Administrative Court in the second instance overruled the decision made by the IP Court. First of all, the SAC held that the formality of priority documents TIPO requires has basis in the Patent Act. Article 158 of the Patent Act is a general empowerment clause authorizing the Ministry of Economic Affairs, which is part of the executive branch, to formulate the Implementing Rules as the auxiliary regulations to enforce the Patent Act. The policy goal is to encourage innovation and protect inventions. In order to efficiently achieve this goal, the Ministry of Economic Affairs has been vested with powers to stipulate documents and formality required for the purpose of claiming international priority according to the Implementing Rules. Under this concept, the minimal requirement of a proper priority document is a rather technical and procedural matter which, importantly, did not supersede the literal scope of the Patent Act, nor override the power that the Patent Act has delegated.
As a member of the World Trade Organization (WTO), Taiwan is obliged to be bound by the TRIPs Agreement as well as the substantive clauses in the Paris Convention. When an applicant claims a foreign priority under the terms of the Paris Convention, TIPO will determine whether the earlier foreign application and the Taiwanese applications filed are the same. To do so, the TIPO will investigate whether the earlier application was filed in a peer WTO member state, whether the Taiwanese application is filed within 12 months from the earliest application date, and finally whether the inventions filed in the foreign country and in Taiwan are the same. A proper “certified copy of the priority application” under the Patent Act is one which bears enough information enabling TIPO to make a judgement as to whether a foreign priority claim is lawful. Merely presenting a filing receipt would not be sufficient in this regard.
The Patent Act and its Implementation Rules did not lay unreasonable additional burdens on the applicants by demanding submission requirements of the priority document, the SAC emphasized. It was understandable that processing and delivery of a priority document takes time. To ensure a standard of fairness to all applicants worldwide, TIPO tentatively accepts a photocopy firstly submitted within 16 months from the priority date if the due date is imminent. The applicant will need to submit the original copy during a designated timeframe of extension, in order to rectify the priority document requirement eventually. Only in the event that the applicant did not rectify an error within the designated timeframe, will TIPO deem that a priority claim has not been made.
To conclude, the SAC vacated the IP Court judgment, which affirms that a foreign filing receipt is not able to replace a priority document.
Electronic Priority Document
On a side note, TIPO has been accepting electronic copies of priority documents since June 2016, in an effort to relieve the burden placed on an applicant regarding the requesting and delivery of paper copies. Furthermore, Taiwan has reached bilateral agreements for priority document exchange (PDX) programs with Japan in 2012 and with Korea in 2016. As such, the access and transfer of priority documents are much easier than in the past. |