Taiwan and China Will Start Mutual Recognition of Patent Priority Claims

11/23/2010

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On 29 June 2010, Taiwan’s Straits Exchange Foundation and China’s Association for Relations across the Taiwan Straits signed the Cross-Strait Economic Cooperation Framework Agreement (“ECFA”) and the Cross-Strait Intellectual Property Right Protection Cooperation Agreement (“IPR Agreement”), which both took effect on 12 September 2010. To comply with the implementation of the IPR Agreement, amendments to Articles 27 & 28 of the Patent Act were announced and took effect on 12 September 2010. Through the adjustments of the internal implementation guidelines adopted by the relevant government agencies, both Taiwan and China will, as of 22 November 2010, start to accept priority claims between Taiwan and China but the priority date thus claimed shall not be earlier than 12 September 2010 (i.e., the date on which the IPR Agreement took effect). Implementation details for Taiwan and China are as follows:

Taiwan:

As of 22 November 2010, for a Taiwanese patent application filed with priority claim based on a Chinese basic application ("Chinese Basic Application"), the Intellectual Property Office (IPO) in Taiwan will accept such priority claim. In addition to a patent applicant from Taiwan or China, a foreign applicant ("Foreign Applicant") whose home country has reciprocity with Taiwan for patent priority claim may also claim priority for his/her Taiwanese patent application based on a Chinese Basic Application. For the patent applications already filed with the IPO with priority claims based on Chinese Basic Applications, for which the IPO issued notifications to "temporarily suspend their decisions on the said priority claims", since these applications do not meet the requirements (i.e., the priority claim is made on or after 22 November 2010 and the priority date thus claimed is not earlier than 12 September 2010), the IPO will not resume their handling of the priority claims already made. In addition, the IPO will accept priority documents in electronic form.

China:

On 17 November 2010, the State Intellectual Property Office (SIPO) in China announced the Regulations Concerning Patent Filing by Taiwanese Applicants ("Regulations"), under which the SIPO will, as of 22 November 2010, accept priority claims made by Taiwanese applicants based on priority applications filed in Taiwan, and the priority date thus claimed shall not be earlier than 12 September 2010. The Regulations is silent on how to deal with matters related to priority claim made by a Foreign Applicant based on a Taiwanese basic application. After checking with the SIPO, it is learned that the SIPO's practice is probably as follows: Priority claims accepted by SIPO under the IPR Agreement are aimed at those made by applicants from Taiwan and China. However, for a Chinese patent application jointly filed by two or more co-applicants, the SIPO will accept priority claim made based on a Taiwanese basic application if at least one of the co-applicants is from Taiwan (Such Taiwanese co-applicant must be listed as the 1st co-applicant in the written patent application).