EXAMINATION GUIDELINES FOR DOMESTIC PRIORITY CLAIMS

01/01/2003

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Article 25-1 of the 2001 amended Patent Law, introduces domestic priority claims into Taiwan for the first time. To provide uniform criterion in the examination of patent applications, on 18 November 2002 the Intellectual Property Office (IPO) announced certain examination guidelines for domestic priority claims (Chapter 5 Section 2 of the IPO's Patent Examination Guidelines). The main points of the guidelines are as follows:

The Patent Law provides that when an appli-cant files a further patent application (a "sub-sequent application") on the basis of an in-vention or new utility model patent applica-tion previously filed in Taiwan (a "prior ap-plication"), the applicant may claim domestic priority for the subsequent application, and the priority claim thus made should apply to the invention or creation that has been disclosed in the specification or drawings of the prior ap-plication. The domestic priority practice ap-plies only to invention and new utility model patents applications, but not to new design patent applications. A prior invention appli-cation may be used as a basis for a priority claim for a subsequent new utility model patent application, and vice versa. According to the Patent Law, a priority date thus claimed may not be earlier than 26 October 2002.

To avoid duplication of publication and ex-amination, after an application is filed claim-ing domestic priority, the prior application should be deemed to have been withdrawn 15 months from the day following the filing of the prior application.

An applicant who files a patent application based on an invention or new utility model patent application previously filed in Taiwan may claim priority for the invention or crea-tion that was disclosed in the specification or drawings of the prior application, except in the following circumstances:

1.More than 12 months have elapsed since the day following the date of filing the prior application;

2.Priority has already been claimed under Article 24 or Article 25-1 for the invention or creation disclosed in the prior applica-tion;

3.The prior application was converted to more than one application or a divisional application made respectively under Para-graph 1, Article 32 or Article 101 of the Patent Law; or

4.An examination decision has already been made for the prior application.

After 15 months have expired after the day following the said filing date of the prior ap-plication, the applicant may not withdraw the priority claim. If the subsequent application claiming priority is withdrawn within said 15 months, the priority claim will be deemed to have been withdrawn at the same time.

If an applicant makes multiple priority claims for the same application, the priority period should run from the day following the earliest priority date.

If priority is claimed, examination of pat-entability should be based on the priority date.

An applicant should make a declaration of priority claim in the patent application at the time of filing, stating the filing date and ap-plication number of the prior application; otherwise, priority claim will be denied.