ROC-GERMAN MEMORANDUM OF UNDERSTANDING

01/01/2002

---

On 16 November 2001, Commissioner Ming-Bang Chen of the ROC Intellectual Prop-erty Office (IPO) and Commissioner Jürgen Schade of German Patent and Trademark Office signed, in München, a Memorandum of Under-standing (MOU). Its key features are as follows:

It confirms the existing reciprocity between Germany and the ROC for claiming priority for invention and new utility model patent applications will be maintained. However, There is still no reciprocity between the Ger-many and the ROC with respect to claiming priority for new design patent applications.

The Patent Law of Germany and that of the ROC will provide term extension for patents covering pharmaceuticals and plant protection products up to five years. The MOU provides the reciprocity for nationals (natural persons or legal persons) from Germany to seek patent term extension for their ROC patents covering pharmaceutical-related or agrichemical-
related inventions in accordance with Article 51 of the Patent Law. According to said Ar-ticle 51, for a pharmaceutical-related or a ag-richemical-related patent case (either a prod-uct patent or a process patent) that is filed on or after 23 January 1994, the patentee may seek an extension of his patent for a period between 2 to 5 years if the practice of the patent needs prior government approval of which the process takes two years or more from the publication date of the patent. An application for patent term extension must be filed within 3 months from the date on which the first government approval is issued and 6 months prior to the expiration date of the original patent term.

Up to December 2001, countries having re-ciprocity with the ROC for seeking patent term extension include USA, Australia, U.K., New Zealand, and Germany. Since the 1997 Patent Law amendment took effect on 1 January 2002, according to Article 51 of the amended Patent Law, the reciprocity re-quirement for a foreigner to seek patent term extension is repealed. Patentees from any foreign country may now seek patent term extension.