mardi, mars 08, 2011

Taiwan and China to start mutual recognition of patent priority claims

On June 29 2010 Taiwan's Straits Exchange Foundation and China's Association for Relations across the Taiwan Straits signed the Cross-Strait Economic Cooperation Framework Agreement and the Cross-Strait IP Rights Protection Cooperation Agreement, which both took effect on September 12 2010. In order to comply with the implementation of the IP agreement, amendments to Articles 27 and 28 of the Patent Act were also made and took effect on September 12 2010. Following amendments to the internal implementation guidelines adopted by the relevant government agencies, on November 22 2010, Taiwan began to accept priority claims from China and China began to accept priority claims from Taiwan, although the priority date thus claimed cannot be earlier than September 12 2010 (ie, the date on which the IP agreement took effect).

Since November 22 2010, the Taiwan Intellectual Property Office (TIPO) has accepted Taiwanese patent applications filed with priority claims based on Chinese basic applications. In addition to a patent applicant from Taiwan or China, a foreign applicant whose home country has reciprocity with Taiwan for patent priority claim may also claim priority for his or her Taiwanese patent application based on a Chinese basic application.

For patent applications already filed with the TIPO with priority claims based on Chinese basic applications, for which the TIPO issued notifications to "temporarily suspend their decisions on the said priority claims", since these applications do not meet the requirements (ie, the priority claim is made on or after November 22 2010 and the priority date thus claimed is not earlier than September 12 2010), the TIPO will not resume its handling of priority claims already made. In addition, the TIPO now accepts priority documents in electronic form.

On November 17 2010, the Chinese State Intellectual Property Office (SIPO) announced the Regulations Concerning Patent Filing by Taiwanese Applicants, under which, as of November 22 2020, the SIPO accepts priority claims made by Taiwanese applicants based on priority applications filed in Taiwan; the priority date thus claimed may not be earlier than September 22 2010. The regulations are silent on how to deal with matters related to priority claims made by a foreign applicant based on a Taiwanese basic application.

The SIPO has indicated that priority claims accepted by the SIPO under the IP 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 a Taiwanese co-applicant must be listed as the first co-applicant in the written patent application).

For further information on this topic please contact
Daisy Wang at Lee and Li Attorneys at Law by telephone (+886 2 2715 3300), fax (+886 2 2713 3966) or email (daisywang@leeandli.com).

Contributed by Lee and Li Attorneys at Law