TIPS^®  Taiwan Intellectual Property Special

TSAI, LEE & CHEN-P.3

The TIPO, therefore, made such announcement. Accordingly, no matter whether the evidence and reasons submitted by the petitioner is new or supplemental, the competent authority has to review all evidentiary documentation even if the petitioner fails to comply with the one-month period.The First Day of the Three-Month Limit of Claiming Priority Right Shall Not Count

Article 24 (I) of the Patent Law provides that “[a] patent applicant, who has filed his first patent application legally in respect of an invention in a foreign country which allows Taiwan nationals to claim priority based on reciprocal principle and has filed his patent application for the same invention in the Taiwan within twelve months following the date of his first patent application in foreign country, may claim a priority for his Taiwan application.” Article 25 of the Patent Law further stipulates that “[a]n applicant claiming priority in accordance with the preceding Article shall, when applying for patent, simultaneously file a statement and declare in the written application the filing date and the application number of the corresponding foreign application as well as the foreign country in which same application was filed. The applicant shall submit to the Patent Authority the application documents evidencing the acceptance of the corresponding application by the foreign government involved, within three months from the filing date; the applicant shall not be allowed to claim the priority if he fails either to make the statement concerning priority claiming when filing for patent, or to submit the certified application documents within the time limit.” Given the above, whether or not the applicant would be declined to claim priority if he fails to submit relevant documents within three months is very crucial to the patent applicant. Moreover, on which date shall this time limit start counting is also important.

In the Administrative Court 89-Pan-1358 judgment, the Defendant, the MOEA stated that the three-month time limit is statutory and any failure to comply with the time limit will lead to lapse of the priority right. The MOEA argued that, the Plaintiff filed his first patent application on October 24 1997 and therefore the deadline for submitting the documents to claim priority right should be January 23, 1998 according to the Patent Law. Despite that the Plaintiff applied for an extension of the statutory time limit

with the Patent Authority claiming that the Plaintiff resides abroad and should be granted an extension pursuant to Article 11 of the Patent Law. However, the Patent Authority denied the Plaintiff’s request and ruled that the Plaintiff is not allowed to claim the priority right since the Plaintiff did not submit the documents until January 26, 1998.

The Defend further maintained that the first day of the statutory time limit stipulated in Article 25 shall count; therefore, the deadline for the Plaintiff to submit document to support his priority right should be January 24, 1998. However, the above argument was rejected by the Administrative Court. The Administrative Court held in its judgment that, Article 120 II of the Civil Law provides that “[w]hen a period is fixed by days, weeks, months or years, the first day is not included in the calculation;” therefore, the above provision shall also apply to the statutory time limit provided in Article 25 of