TIME LIMIT FOR PRIORITY DOCUMENTS NOT INVARIABLE

09/01/2003

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In its past practice, the Intellectual Property Of-fice (IPO) has taken the view that the time limit under Article 25 of the Patent Law for submitting priority documents after filing a patent applica-tion is an invariable statutory time limit. On that basis, the IPO has generally rejected the priority claims of applicants who were unable to produce the necessary documents within the time limit. Under the Patent Law as currently in force (until the amended law takes effect in July 2004), the time limit is three months from the date of filing the patent application and asserting the priority claim.

Recently, in a case before the Taipei High Ad-ministrative Court, Lee and Li represented a client in disputing the nature of the statutory time limit for presenting priority documents. The court rejected the IPO's view that it is an in-variable time limit. In the case in question, for reasons beyond its control, our client had been unable to deliver to the IPO the documents supporting its priority claim before the three-month time period expired, and the IPO had rejected its priority claim without further consideration. Lee and Li brought an adminis-trative appeal and then an administrative suit on the client's behalf.

The court found in our client's favor, overturning both the original administrative decision and the administrative appeal decision. The court stated that statutory time limits could be divided into procedural time limits and invariable time limits, according to their nature. The time limits for patent applications and other procedures were periods for fulfilling a procedural duty to act, and by their nature could not be considered to be invariable time limits. A patent applicant who asserted a priority claim was required to submit, within three months from the filing date, docu-ments evidencing the acceptance of an applica-tion for processing by the government of another country. But this was a procedural period for providing evidentiary documents, and by its na-ture was not an invariable time limit. The IPO's assertion that it was an invariable time limit was incorrect.

The significance and implications of the judg-ment are outlined below:

The Taipei High Administrative Court agreed with our view that the statutory period for submitting documents after filing an applica-tion is of the nature of a procedural time limit, and not, as the IPO has consistently asserted, an invariable time limit. This means that its legal force is very different. In the case of a procedural time limit, under Article 11 of the current Patent Law an applicant may apply for an extension of the period for carrying out the procedure concerned. The outcome for our client's case is that the IPO must fully recon-sider our client's application for extension, and decide whether to accept or reject it. If the IPO approves the extension then it should also consider the priority claim. If it rejects the extension, one will have to consider how to proceed depending on the actual grounds stated by the IPO.

Similar situations have arisen in the past for many applications handled by Lee and Li. But because most clients do not take up the op-portunity to pursue administrative remedies, they have not been able to test the view of the administrative courts as to the nature of the period for submitting priority documents. Therefore in cases where applicants were unable to present supporting documents within the statutory period, and had no le-gitimate grounds for requesting that matters be returned to their previous state, the IPO has always refused to consider priority claims, based on its view that the time limit was an invariable one. If the High Administrative Court's view of the nature of the statutory time limit is confirmed, then clients whose previous priority claims were refused in similar cir-cumstances still have the opportunity to seek to have such decisions annulled under the provisions of the Law of Administrative Pro-cedures.