Claiming International Priority for a Patent Application in Taiwan

The system of international priority serves as a convenience for an applicant from a given country to file for applications of the same invention in various jurisdictions on different filing dates and yet wish to enjoy the benefits which may be received when considering the examination of applications, which will typically be based on the filing date of the first-filed application. Several international treaties are currently effective and in force to harmonize priority rights across national borders, including the Paris Convention for the Protection of Industrial Property (Paris Convention), the European Patent Convention (EPC), the Patent Cooperation Treaty (PCT), and the Agreement on Trade-related Aspects of Intellectual Property (TRIPs) of the WTO.

As a result of Taiwan’s international status pro tem, Taiwan is not a contracting state of the Paris Convention, one of the international treaties which defined priority right. Due to Taiwan’s accession to the WTO in 2002[1], Taiwan is bound by the TRIPs Agreement, which obligates all members to comply with the existing conventions regarding the protection for intellectual property rights, including the Paris Convention.  

Even though the right to claim priority has been mutually recognized between Taiwan and its peers in the WTO, China still refuses to recognize Taiwan's right even under the WTO framework In 2010, the Cross-Strait Agreement on Intellectual Property Right Protection and Cooperation (IPR) Agreement was introduced between China and Taiwan under the Economic Cooperation Framework Agreement (ECFA). Applicants from either side who wished to claim priority to a first-filed application can finally do so based on the IPR Agreement. However, when the applicant is a citizen or an entity from a third party country, (as in, not China or Taiwan,) some technicalities and particulars shall be handled with caution.

General Provision: Convention and Foreign Priority

Taiwan is bound by Article 2.1 of the TRIPs Agreement that has incorporated the Paris Convention, which is obligated for all members of the WTO to comply with . Corresponding legislation and amendments have been introduced to Taiwan’s statutory laws accordingly. Pursuant to the nationality requirement of Article 28.1 and 28.3 of Taiwan Patent Act, it provides that a foreign applicant who claims priority to a first-filed foreign application must either be,

1) A citizen/entity of a WTO member state or a WTO extension member;

2) A citizen/entity of a country which reciprocally recognizes Taiwanese citizen's priority claims; or

3) An individual/entity, while either of foregoing two circumstances is absent, who has domicile or business establishment in a WTO member state, in the territory of a WTO extension member, or in a jurisdiction that has implemented a reciprocity policy. (Quasi-national status)

As of February 2015, the WTO is comprised of 160 members and stands for more than 95% of global GDP[2] A foreign applicant from a peer WTO member is eligible to claim convention priority right in Taiwan by utilizing Article 28.1 of the Taiwan Patent Act. The same rule applies to some territories that are in a particular constitutional relationship with a WTO member, such as the Isle of Man of the UK and the Netherlands Antilles, who are deemed as WTO extension members.

In the second scenario, if the foreign applicant is a citizen/entity of a non-WTO member country but which reciprocally recognizes priority of a first-filed Taiwanese application, the foreign applicant can still enjoy the entitlement of priority claim. Such cases were commonly seen before Taiwan’s induction to the WTO.

Lastly, exercising the quasi-national status clause can also lift the restriction over priority eligibility because of an applicant’s citizenship or state of registry. As stated previously, while an entity of WTO extension member may enjoy the right to claim priority, not all territories are necessarily extended per se because extension is an internal arrangement between a territory and its parent state. For example, the British Virgin Islands is not an extension member under current WTO structure. As prescribed in Article 28.3 of the Taiwan Patent Act, when a foreign applicant is neither a citizen/entity of a WTO member, an extension member, nor of a reciprocal country, eligibility is provided only if a domicile or a business establishment is set up and situated in a WTO member, an extension member, or a reciprocal country. A stateless person or an entity registered in an overseas territory that is not a WTO extension member can thus become eligible through such route. For instance, a company of the British Virgin Islands can register a representative office in Hong Kong and thereafter become eligible as a quasi-national to claim priority in Taiwan.

Additional Requirements and Related Issues

In order to be subject to the treatment of quasi-national status, supporting evidence such as certificate of permanent residency, work permit, certificate of registration of a branch office or a representative office must be accompanying the patent application. One should note that a subsidiary company is not an example of a business establishment. A subsidiary which is formed based on the parent corporation’s investment is an independent and separate legal entity. Thus the parent corporation cannot include its subsidiary as a business establishment, and vice versa.

In addition, where there are co-applicants for an application, each one of them shall comply with the nationality requirements. The nationality of the applicant shall be determined at the time when the application is filed at the Taiwan Intellectual Property Office (TIPO). Once eligibility is established upon filing, the legitimacy of priority claim will not be affected regardless of any future changes of the applicant’s citizenship, domicile, business establishment, or the right to apply upon which the priority claim is based.

Article 4.A (1) of the Paris Convention stipulates that a person who enjoys priority is the applicant or the applicant’s successor in title, suggesting that an assignee of patents or of application rights is entitled to priority claims. When the applicants recorded in the first-filed application are different from those in a later-filed Taiwanese counterpart, as a current practice, those in the later-filed application are assumed to be the legitimate and eligible assignees. Submission of a copy of the assignment to TIPO is not required.  Any legal disputes as arisen regarding the question of which party has the ownership of applications shall be resolved at the court forum.

Priority of First-filed Applications under EPC or PCT

Even though Taiwan is neither a contracting state to EPC or PCT, a foreign applicant may yet claim priority to a first-filed application under the EPC or PCT in a later-filed Taiwanese application. Article 87(1) of EPC and Rule 4.10(a) of the Regulations under the PCT prescribe that, an applicant who files for a first application in a WTO member shall enjoy priority right in a later-filed PCT or EPC application. Based on the reciprocity principle of Article 28 of the Taiwan Patent Act, a later-filed Taiwanese application may also enjoy priority claim for the same invention to the first application filed under the EPC and PCT.

As a side note, Taiwan is not a PCT member, the 30-month timeframe for national phase entry is therefore not applicable with regards to Taiwan. A Taiwanese national application must be filed within 12 months from the PCT filing date to appropriately claim priority.

First-filed in China and Later-Filed in Taiwan – A Strategy for Applicant from a Third Party Country

It has been easier and more feasible to claim priority between Taiwan and China since the two parties entered into the IPR Agreement on June 29, 2010, which later became effective in September of the same year. As an instrument to avoid both parties' political disputes, the IPR Agreement serves as a protocol for Taiwan and China to mutually recognize priority claims. Clause 2 of the IPR Agreement states:

Both parties agree to, in accordance with its respective laws and regulations, confirm the validity of each party’s first filing date for patent, trademark, and variety rights […]

Thus, a citizen or an entity as an applicant from either side is entitled to the benefits of claiming priority to a first-filed Chinese/Taiwanese application. These benefits can also be enjoyed as long as at least one applicant among all other foreign co-applicants is a citizen of or an entity incorporated in Mainland China, Hong Kong, Macau, or Taiwan.

However, such privileges may not apply when the applicant(s) is(are) not a citizen or an entity of China or Taiwan. When an applicant from a third party country has a first-filed Chinese national application or a PCT application designating State IP Office of the PRC (SIPO) as the receiving office and then later files for a Taiwanese application, Taiwan recognizes such priority claim under the WTO framework. But in  current practice, China does not recognize a priority claim to a first-filed Taiwanese application in a foreign applicant’s later-filed Chinese application pursuant to the interpretation of the “Several Provisions of the SIPO on Patent Applications of Taiwan Compatriots,” No.58 Order of the SIPO on November 15, 2010. Another point of caution is that the recognition of a priority claim to a first-filed Taiwanese application does not apply to any later-filed PCT application that designates SIPO as the receiving office, since IPR Agreement is silent on that topic.

Strategically, when the applicant is from a third party country and no application has yet been filed in any other jurisdictions, it is advisable to first file for an Chinese application and then claim priority to the same while later filing in Taiwan. Regrettably, conducting the operation in the opposite order, meaning Taiwan first and then China, is currently not applicable.

Conclusion

Claiming international priority to a patent application is  usually quite lenient in Taiwan. Some particulars should be noted as a result of its unique international status. An eligible applicant may be one from a WTO member, a WTO extension member, or a country implementing reciprocity policy; or else if any of above is absent, has a domicile or a business establishment in any one jurisdiction of the above three kinds. China and Taiwan have been mutually recognizing priority claims to patent applications since 2010. Due to SIPO’s current practices, , the most encouraged route for a foreign applicant who wishes to file for applications in both jurisdictions while taking the benefit of priority claims is to first file in China, via either national or PCT application, and subsequently filing in Taiwan.

ANNEX I: APPLICABILITY OF CLAIMING INT’L PRIORITY IN TAIWAN