Newsletter
GRACE PERIOD FOR TRADE-MARK AND PATENT PRIORITY CLAIMS NOT EXTENDABLE
Article 28 Paragraph 1 of the Patent Act provides that a patent applicant wishing to assert a priority claim must declare the claim at the time of filing the application, and must state in the application document the date of the foreign application and the country in which the application was filed. Article 28 Paragraph 2 provides that within four months from the filing date the applicant should submit documents issued by the government of the foreign country concerned, evidencing that the application has been accepted for processing. Article 28 Paragraph 3 provides that if an appli-cant fails to comply with the requirements of Paragraphs 1 and 2, its priority claim will not be recognized. Article 4 of the Trademark Act contains similar provisions regarding the loss of trademark priority rights.
One of the key issues of the priority claim is whether the Intellectual Property Office (IPO) must accept evidentiary documents in support of a priority claim if such documents are submitted after the four-month period provided for by Ar-ticle 28 Paragraph 2 of the Patent Act has expired, but before the IPO has issued a notice rejecting the priority claim. In the past, the courts have taken different views on this issue.
However, in a 2006 judgment, the Supreme Administrative Court held that in view of the fact that Article 28 Paragraph 3 of the Act expressly provides that failure to comply with the statutory period for submitting evidentiary documents will result in the loss of priority rights, the submission of such documents after the four-month period has expired is obviously not lawful. The Taipei High Administrative Court also took the same view in a subsequent judgment in a similar case.