TIPS^®  Taiwan Intellectual Property Special

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The Announcement Date of Reciprocity Shall be the Basis for Foreign Companies Claiming Priority Rights

The biggest semi-conductor equipment manufacturer in Europe, a company based in the Netherlands, has filed a number of administration proceedings concerning priority rights of patents, before the Taipei High Administrative Court. However, the Supreme Administrative Court ruled against the company in most cases. The ruling of case no. Pan-740, by the Supreme Administrative Court on May 18, 2006, indicated that the effective date of the priority right of a patent claimed by a foreign company in Taiwan, shall not be earlier than the announcement date of reciprocity between the countries, or the date Taiwan became a member of the WTO, i.e. January 1, 2002; The Supreme Administrative Court thereby overruled the claims of priority requested by the aforesaid Dutch company. The ruling is symbolic for future cases regarding the claiming of priority of a patent by a foreign company.

The aforesaid Dutch company filed an invention patent application entitled “A Lithographic Projection Apparatus, Method of Manufacturing the said Apparatus, and the Apparatus Manufactured,” at the Taiwan Intellectual Property Office (TIPO) in May, 2002, along with a statement claiming priority right. The filing date of the corresponding foreign application, and the country where the application was first filed, as declared in the written application, was May 9, 2001, and the EPO, respectively. However, the TIPO concluded after examination that the application was not entitled to the priority right being claimed. The said company was unwilling to accept the conclusion, and filed for administrative proceedings accordingly. The said company claimed that since Taiwan joined the WTO on January 1, 2002, all the WTO members, including the Netherlands and other EU countries, should be considered as countries having treaties or agreements to accept priority claims based on reciprocity with Taiwan. Therefore, as the said company first filed the application in accordance with the European Patent Convention, the application is being considered as a regular national filing within a signatory country of the Convention. Thus, it can be deemed as being filed in the Netherlands, and should be entitled to the priority rights.

On the other hand, the TIPO considered that, pursuant to the provisions in Paragraphs 1 and 3 of Article 27 of the Taiwan Patent Law, the principle of reciprocity shall be adopted to determine the regulations related to international priority rights. Thus, the priority date claimed by a national of a reciprocal country shall not be earlier than the announcement date of reciprocity between Taiwan and the country. Hence, the priority date claimed by a national or an associate-national of a WTO member, or an associate-national of a reciprocal country, who also is a national of a non-reciprocal country, shall not be earlier than January 1, 2002. The Supreme Administrative Court concluded that the corresponding application was filed at the EPO on May 21, 2001, and since Taiwan and the EPO do not mutually recognize priority rights, and that the priority date of the said application was prior to January 1, 2002, due to non-retroactivity of the law, the TIPO’s decision which concluded that the Dutch Company was not entitled to the priority right, was not in violation of the law. Thus, the appeal made by the said company was overruled.