It is stipulated in Article 29 of the Patent Act that, when filing a patent application with priority claim, the applicant needs to submit to the IP Office information about (i) the filing date of the first-filed foreign application from which priority is claimed; (ii) the country or WTO member country receiving the first-filed foreign application; and (iii) the serial number of the first-filed application. In addition, a certified copy of the first-filed application issued by the foreign country or WTO member country needs to be filed within sixteen months from the earliest priority date claimed. Failure to meet these requirements will result in forfeiture of the right to claim priority. Moreover, pursuant to Article 26 of the Enforcement Rules of the Patent Act, an original copy of the certified copy of the first-filed foreign application (i.e. priority document) is a prerequisite document required for claiming priority. If the priority document submitted by the applicant within the 16-month time limit is merely a photocopy, the IP Office shall notify the applicant to further submit an original copy of the priority document within an appointed time limit.
In one instance of patent application with priority claim, the applicant submitted to the IP Office a copy of the filing receipt of the first-filed foreign application within the 16-month time limit and indicated that an original copy of the priority document will follow shortly. However, the IP Office dismissed the priority claim, holding that the filing receipt could not be deemed as a valid priority document. Not satisfied with the IP Office’s Decision and the Ruling rendered by the Board of Appeals, the applicant pursued the case by filing a petition for administrative litigation with the IP Court.
The IP Court found the petition for administrative litigation to be well-grounded for the following reasons: (i) no regulations shed light on the form an acceptable priority document must take; (ii) the filing date, the application number and the country where the first-filed foreign application was filed were all clearly specified in the filing receipt submitted by the applicant and hence the filing receipt sufficed to meet the minimum requirement for claiming priority; and (iii) the IP Office’s file records show that submission of filing receipts to support priority claim has been accepted in the past, which earned the applicants additional time to submit original copies of the priority documents. In this context, the IP court ruled that the applicant’s right to claim priority should be restored if the same examination criteria were adopted.
Taking into account of the IP Court’s opinion in this case, the IP Office took steps to revise the Examination Guidelines. It is now manifested clearly in the new Guidelines implemented since November 1, 2018 that besides the issue date of the priority document, an acceptable priority document also needs to include the filing date and application number of the first-filed foreign application, as well as the technical disclosure of the invention (i.e. the specification and the drawings). The same Examination Guidelines also stipulate that a filing receipt (in either paper or electronic form), notice of acceptance of an application, patent certificate, notice of allowance or excerpt from the patent gazette published by the competent authority of a foreign country or WTO member country or a photocopy of the file wrapper shall all not be recognized as a proper priority document.
On the other hand, the IP Office plans to further revise the criteria for the restoration of the right to claim priority as stipulated in Article 29 of the Patent Act in the near future. The IP Office intends to make it clear that the right to claim priority may be restored only if the priority claim was not specified at the time of filing due to an unintentional oversight, or the filing date or the country or the WTO member country of the foreign application from which priority is claimed was inadvertently left out. Moreover, in case the applicant fails to submit a priority document within the 16-month statutory time limit, such a delay would not be deemed as “unintentional” and the applicant’s request for restoration of the right to claim priority will surely not be entertained.