TIPS^®  Taiwan Intellectual Property Special

“Non-intentional Disclosure” Exception to the Novelty Requirement

Taiwan adopts absolute novelty, which means any disclosure in the world bars
the novelty for patent applications filed in Taiwan. In the past, there were following
2 exceptions to the absolute novelty, which give a 6-months grace period for the
applicant to file the patent application after the disclosure:

1. Disclosure for experimental or research purpose; and

2. Disclosure in a government-sponsored or recognized exhibition.

The Patent Law Amendment adds another exception, “disclosure unintended by
the applicant.” If the invention has been disclosed by a third party unauthorized by
the applicant, the applicant still can file a patent application within the 6-month grace
period after the disclosure.

Nevertheless, according to the Guidelines formulated by the Taiwan Intellectual
Property Office (TIPO), the exceptions to the novelty bar are incidents independent
from the priority claim. For example, in the case of involuntary disclosure, the
invention must be filed in Taiwan within the six-month grace period, in order for the
involuntary disclosure to be considered an exception to the novelty bar. The
applicant may still claim priority if a basic patent application has been filed in a
reciprocal country prior to the effective filing in Taiwan. However, the priority date
is independent from the exceptions to novelty bar prescribed in Article 22 of the ROC
(Taiwan) Patent Law. In other words, the exceptional cause as claimed does not
serve to put back the priority date (i.e. by adding another six months to it). The only
legal effect was that the particular disclosure was disregarded. All other documents
prior to the priority date, if claimed, remained state of the art.