Patent

Successful Reinstatement of Priority Date

Saturday is usually a non-working day for government agencies in Taiwan. Exceptions exist under the circumstance when the government adjusts working days for the observance of national holidays. This can be exemplified by the 2010 Lunar New Year holidays from February 13 to 21, 2010, during which February 19, 2010 was originally a working day, but had been shifted to February 6, Saturday, in an adjustment for consecutive holidays.

The applicant in question, a U.S. company, sent its instruction to file an invention application on February 7, Sunday, claiming priority to February 6, 2009 from its U.S. counterpart because they believed that Monday February 8, 2010 was the due date according to the conventional practice. The application was filed with priority claims on the following Monday February 8, 2010; however, the TIPO declined to acknowledge one of the priority claims for the reason that its deadline of February 6, 2010 had lapsed.

The TIPO’s decision was appealed to the Board of Appeal, requesting to reinstate the priority date, on the basis that “the delay [was] caused by other causes not attributable to applicant” under Article 17 (2) of the Patent Act. The claim is built on the fact that Saturdays are known to be non-working days for government agencies in Taiwan, that the applicant is a foreign entity who would not have reason to be aware of an adjusted working Saturday, and that the local patent attorney is not at fault for failing to meet the priority deadline because the filing instructions were not received until Sunday morning, February 7, 2010.

Pursuant to Article 48(4) of the Administrative Procedure Act, “[i]f the last day of a period falls on Sunday, national holiday or any other holiday, the day following that day shall take its place, and if the last day of a period falls on Saturday, its last day shall be the Monday morning of the following week.” Whether it is a national holiday or an otherwise non-working day, shall be determined by government agencies. Should a specific Saturday be adjusted to a working day, government agencies are open as per usual. Given that a party may still contact the competent government agency on that day, Article 48(4) of the Administrative Procedure Act does not apply, and therefore the last day of any statutory deadline falling on a working Saturday shall not be extended to the following Monday.

Such interpretation of the law is based on the main points of the Supreme Administrative Court judgment in December 2009, and a Letter of Interpretation from the Ministry of Justice released in February 2010. Accordingly, the TIPO in this case believed that either the applicant or its patent attorney should be responsible for the lapse of the priority date.

The Board of Appeal concurred with the TIPO’s opinion that Article 48(4) of the Administrative Procedure Act does not apply in this case. However, it opined that Taiwan adopts the solar calendar and, like most countries in the world, it sets Saturdays as non-working weekends for government services. In this case, although the Executive Yuan had announced and published the adjustment early in August 2009 through its website and various local media, foreign entities residing outside of Taiwan may still be short of means to know such information. The Board of Appeal urged the TIPO to investigate whether the announcement was available to the applicant’s home country or locality, so as to determine whether the applicant should have acted on the opportunity to access such information.

Since the TIPO could not provide such proof, the priority date of the original claim was reinstated on November 26, 2010 in the TIPO’s new decision after remand.

As the decision is contrary to the interpretation of Taiwan’s Ministry of Justice, it is still not clear whether the decision in this case may be applied to other cases under a similar circumstance. It is worth noting that the State Intellectual Property Office in China explicitly stipulates to postpone the due date of a statutory period that falls on an adjusted working weekend to the first working day after the weekend. Foreign applicants should therefore be cautious of the difference between the IPOs of China and Taiwan.