Regarding patent priority right, Article 28 of Taiwan Patent Act stipulates that the applicant can declare the foreign earlier-filed application of the same invention as a basis (“basic application”) to claim patent priority. The basic application refers to the first application filed in a foreign country, which reciprocally allows Taiwan to claim patent priority, or any member of the World Trade Organization (“WTO”). Meanwhile, Article 29 requires that the applicant claiming priority right should simultaneously make a declaration with respect to the following when filing a patent application: (1) the filing date of the basic application; (2) the application number of the basic application; and (3) the country or member of WTO in which the basic application was filed. Moreover, the applicant shall submit a certified copy of the basic application (“certified priority document”) issued by the foreign patent authority within 16 months after the priority date. In case of a violation of these requirements, the priority claim shall be deemed not to have been made. However, both Taiwan Patent Act and the Enforcement Rules of the Patent Act lack clear and complete regulations on what “certified priority document” is. Therefore, what document can serve as certified priority document is disputable in practice. In its recent 3 decisions (107 Pan Nos. 516-518) rendered on November 13, 2019, Supreme Administrative Court gave a detailed instruction on this issue.
The applicant, ENTEGRIS, INC., filed 3 invention applications with Taiwan Intellectual Property Office (“TIPO”) and claimed corresponding US applications as basic applications of priority rights. The applications were enclosed with Filing Receipt and a copy of specification printed by the applicant itself as certified documents of basic application. TIPO, however, did not accept said documents submitted by the applicant as certified priority document, as TIPO normally does for the certified copy of priority right issued by United States Patent and Trademark Office (“USPTO”), which would include a front cover with a sign and seal of USPTO listing the filing date and the application number, as well as patent specification and drawings of the US counterpart. As a result, TIPO denied the applicant’s document as certified priority document, rejecting the priority claim of the 3 patent applications.
The applicant filed administrative lawsuits against TIPO’s decisions. In response, Taiwan Intellectual Property Court (“IP Court”) delivered 3 judgments on September 27, 2018 (106 Xing Zhuan Su No. 68, 107 Xing Zhuan Su No. 15, and 106 Xing Zhuan Su No. 78 judgment), showing consistent stance in favor of the applicant in all 3 cases. IP Court pointed out that Taiwan Patent Act and the Enforcement Rules of the Patent Act do not define what “certified priority document” is; however, Patent Examination Guidelines do stipulate that the applicant is allowed to submit copy of cover of the certified priority document in the statutory period (within 16 months after filing date of basic application) and provide the original document later in a specified grace period. Therefore, IP Court held that the document that can prove the basic application did have obtained a filing date can qualify as certified priority document. Since the filing receipt filed by the applicant was issued by USPTO and stated the country of priority right, filing date and application number; moreover, the applicant would receive the receipt only if USPTO has confirmed that the application is qualified to obtain filing date, so the information on the filing receipt had met all formality requirements equivalent to a copy of cover of the certified priority document required by TIPO. IP court accordingly considered the filing receipt filed by the applicant no different than the copy of cover of certified priority document, and the applicant was allowed to provide the original document later within a reasonable grace period to claim priority right.
Since the above IP Court’s decisions definitely would have a serious impact on subsequent patent examination proceedings on priority right, TIPO actively appealed the 3 cases to the Supreme Administrative Court. Supreme Administrative Court sided with TIPO, reversing the decisions of lower court and holding that while Patent Act does not clearly stipulate the content of certified priority document, the purpose of this document is to provide solid evidence for TIPO to examine the requirements of priority right, i.e., (1) the country of basic application; (2) the application in Taiwan is in accordance with the statutory period; and (3) the invention in basic application is the same as that of the application in Taiwan. Supreme Administrative Court provided a further explanation that “certified priority document” stipulated in Patent Act must be the certification issued by the country of basic application that sets forth the filing date of basic application and the application number. In addition, the certification should enclose the copy of application documents (the patent specification, claims and drawings) which are identical to the original documents and have been certificated by the foreign patent authority. In other words, Supreme Administrative Court held that the certified priority document filed by applicant should allow TIPO examining the content of the basic application certified by foreign patent authority. In conclusion, the applicant’s documents in the 3 cases were not qualified to claim priority right since they were not issued in purpose of certifying priority right.
Current Patent Examination Guidelines (the 2018.11.1 version) provide more specific descriptions about certified priority document. The certified priority document should not only set forth the issue date, the filing date and the application number, but also include the technical contents (patent specification and drawings) disclosed on the filing date. Said Guidelines set clear rules to prevent controversies by preclusion of Filing Receipt, Electronic Acknowledgement Receipt, Notice of Acceptance, Patent Certificate, Notice of Allowance, Patent Gazette, a copy of entire dossier, and a copy of priority document notarized or certificated by Court or other authorities than patent authorities. All in all, in light of the principle stated in the above-quoted Supreme Administrative Court opinion and regulation in current Patent Examination Guidelines, an applicant should take in and comply with relevant proceeding rules; otherwise, his or her right to claim priority would be abridged due to inappropriate expediency or delay about filing of the required documents.