Newsletter
IPO PRACTICE ON FILING DATE RECOGNITION
Taiwan's patent system applies the "absolute novelty" and "first-to-file" principles, and patent applicants desiring to claim priority must declare priority claim at the time of filing a patent ap-plication. Therefore, obtaining a filing date is a crucial step in patent application process.
According to Article 25 of the Patent Act, on the date of filing a patent application, a person or entity entitled to file such patent application must submit a written application, a patent specifica-tion (including claims), and necessary drawings; the filing date is the date on which the written application, specification, and necessary draw-ings are all submitted. Article 25 Paragraph 4 provides that if the applicant first submits a patent specification and necessary drawings prepared in a foreign language, and later submits Chinese-language versions of the patent speci-fication and necessary drawings within the time period specified by the Intellectual Property Of-fice (IPO), the date on which the for-eign-language specification and drawings are submitted will be recognized as the filing date. If the Chinese-language specification and drawings are not submitted before the deadline specified by the IPO, the patent application will not be accepted. However, if the Chinese-langue ver-sions of patent specification and drawings are submitted after the above-mentioned deadline, but before a decision to not accept the patent application is issued, the date on which the Chinese-langue versions of patent specification and drawings are submitted will be recognized as the filing date.
In its practice over the years, the IPO had never taken the fact that a foreign-language patent specification submitted by an applicant did not state the name of the invention, as a ground for finding that the patent application failed to comply with the formality requirements, and thus refused to recognize the date of submitting the foreign-language patent texts as the filing date.
However, the IPO's Procedural Examination Guidelines, which took effect on 20 May 2005, provided that a foreign-language patent specifi-cation must disclose the "title of invention", a patent specification, and patent claims; otherwise, the date of submitting such foreign-language specification could not be recognized as the fil-ing date. After the Guidelines were introduced, the IPO began issuing decisions to delay the fil-ing dates of patent applications filed based on initial submission of foreign-language specifica-tions which did not disclose the "titles of inven-tions." This caused serious consequence that some patent applicants had received postponed filing dates for their patent applications, or even lost their priority claims.
For such cases, where patent applicants filed administrative appeals against the IPO's deci-sions to delay their filing date, the IPO argued that if patent applicants were granted filing dates based on submission of foreign-language speci-fications that do not include "titles of inventions", this would amount to unequal treatments because foreign applicants are treated more favorably than domestic applicants.
Referring to patent legislation and practice of other countries, it is clearly not a universal pro-cedural requirement that a patent specification should disclose the "title of invention." For example, in the USA, to obtain a filing date the patent specification submitted by an applicant at the time of filing need only disclose a detailed description of the invention and the patent claims. If the "title of invention" is already stated in the application document, the applicant is not re-quired to separately disclose it in the specifica-tion. Also, in European practice, if a patent specification does not disclose the "title of in-vention", the applicant may provide the title at a later date without changing its filing date. The harsh stance of IPO appeared to be out of step with international practice. In addition, the le-gality of such restriction which was neither en-visioned nor authorized under the Patent Act but imposed by way of an administrative regulation, was also questionable.
In addition, Taiwanese applicants also first file patent applications for their inventions in other countries, and the IPO's stance might also cause Taiwanese applicants to receive postponed filing dates, with the attendant adverse consequences. The IPO's strict interpretation was clearly at odds with the mainstream of international practice.
Starting from 2006, Lee and Li represented sev-eral clients to contest the IPO's decisions through administrative appeals, and tried to persuade the IPO to change its position. The IPO subse-quently decided to amend the Procedural Ex-amination Guidelines, by deleting the provision that a filing date cannot be recognized based on submission of a foreign-language specification that does not state the "title of invention." Of its own accord, the IPO also reversed its decisions on the affected patent applications, and rein-stated their original filing dates. This is certainly a positive development for IPR protection in Taiwan, and brings Taiwanese practice into line with international practice.