The TIPO has recently revised the procedural examining guidelines regarding the principles governing applicantship, and the revision taking effect on January 1, 2011 applies to all pending applications which are undergoing formality examination. According to the revision, the “true” applicant of a patent application must be established in order to obtain an effective filing date.
As a result of the amendment of the Patent Law in 2001, an assignment is no longer a prerequisite for obtaining a filing date in Taiwan, and may be submitted on a late basis. However, there may occur circumstances in which the assignee named in the belatedly submitted assignment is different from the applicant named in the application form submitted upon filing.
Prior to the recent revision of the principles governing applicantship, the TIPO adopted a lenient attitude towards such inconsistency. For instance, the originally obtained filing date could still be maintained if a statement was submitted identifying that the original applicant was named in the application form through a typographical or transliteration error.
With the revision of the principles governing applicantship, a filing date will be deemed valid only when the correct applicantship is established. Accordingly, if the belatedly submitted assignment fails to show that the applicant named in the application form is a legitimate applicant, the filing of the patent application will not be deemed valid, and the originally obtained filing date will not be given effect. In other words, if the assignee in the belatedly submitted assignment is different from the applicant originally named in the application form, the date the assignment is filed will be deemed the effective filing date under the new principles governing applicantship. To maintain the original filing date, it will be necessary to submit an assignment transferring the right in the application from the inventor to the originally named applicant, and another assignment transferring the right in the application from the originally named applicant to the actual assignee.
As establishing an early filing date is crucial for purposes of priority over competitors, verifying the “true” applicant of a patent application prior to filing is of extreme importance.