IPO PRACTICE ON SUBMISSION OF PRIORITY DOCUMENTS

09/01/2004

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In an announcement dated 2 August 2004, the Intellectual Property Office (IPO) stated its po-sition on the handling of the post-filing time pe-riod for submitting priority documents, as fol-lows:

Under the old Patent Act, within three months from the date of filing, an applicant claiming priority was required to submit foreign appli-cation document certified by the government of the country concerned to verify the accep-tance of the priority application. An applicant that failed to claim priority at the time of filing, or failed to submit the required priority document within the prescribed time period, would lose the right to claim priority. The old Act also provided that a patent application would not be accepted if the applicant failed to complete any procedure related to the appli-cation within the statutory or specified time period, or failed to pay the appropriate fees on time. However, if an applicant completed the procedure or paid the fee after the relevant time period but before being penalized by the IPO, the application would still be accepted.

An applicant that failed to comply with a statutory time limit due to natural disaster or for reasons beyond its control could institute a reinstatement procedure within 30 days after the impediment ceased to exist.

Given the above it is clear that if an applicant claiming priority failed to submit the con-cerned priority document within three months after the patent filing, it would automatically lose its priority claim of the day following the expiry of the statutory time period. This was the automatic consequence of the legislative provisions, and was not affected by factors such as whether the applicant had applied for an extension before the statutory period ex-pired, or whether the IPO had issued a letter rejecting the priority claim. The only remedy available to the applicant that planned to pre-vent the above statutory consequence from taking effect was to file a reinstatement peti-tion in accordance with the Patent Act. An applicant could not apply for extensions of the statutory period at will. The above interpre-tation is stated in judgment issued by the Taipei High Administrative Court on 30 June 2004.

The current Patent Act allows a period of four months after the filing date for an applicant claiming priority to submit a priority docu-ment. Based on the gist of the June 2004 judgment stated above, this time period for submitting priority document should be in-terpreted as an invariable statutory time period, so that the question of applying for extensions does not arise. On this basis, all patent ap-plications filed after 1 July 2004 should be handled in keeping with the above judgment.

Based on the above IPO's announcement, for a patent application filed on or after 1 July 2004, the IPO will not allow applicants to apply for extension of the time period for submitting pri-ority documents (four months from the filing date). However, under the IPO's current practice, this exclusion does not apply in either of the following circumstances:

Where, before the time period expires, the applicant submits a reproduced copy or a fax copy of the first page of the priority document (stating the country of application, application number, and filing date), and at the same time applies for an extension of the period deadline for submitting the original priority document in full.

The applicant institutes a reinstatement pro-cedure in accordance with the relevant provi-sions of the Patent Act, and at the same time submits the original priority document.

Also, in response to the practice of the United States Patent and Trademark Office, introduced in July 2004, with respect to issuing priority documents in electronic form on CD-ROM, the IPO recently began accepting CD-ROM priority documents.