CROSS-STRAIT RECOGNITION OF PATENT PRIORITY

03/01/2005

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The ROC is not a signatory to the Paris Con-vention. Under the Patent Act, a patent applicant may claim priority in Taiwan based on a corre-sponding basic patent application that was filed within the 12 months (invention or new utility model application) or 6 months (new design ap-plication) preceding the date of filing in Taiwan in a foreign country that reciprocally recognizes priority claims with the ROC. Under the above provision, if a foreign country recognizes prior-ity claims asserted by ROC nationals based on ROC patent applications, the ROC will also recognize priority claims by nationals of that country. This is the reciprocity principle for claiming international priority claims. Since Taiwan's accession to the World Trade Organi-zation in 2001, the scope of this principal of re-ciprocity has been expanded to include all WTO members.

In recent years, many multinational enterprises have established bases in mainland China, and conducted technical research and development there. Article 20 of the Chinese Patent Law provides that if the development of an invention, utility model, or design is completed within China, the first patent application must be made in China. As a result of this provision, the ques-tion of whether Taiwan and the mainland China reciprocally recognize international priority claims becomes an issue of concern. In the past, whenever an applicant for an ROC patent has made an international priority claim based on a Chinese patent application, Taiwan's Intellectual Property Office always declined the processing of such claim. Recently, a foreign company contested such IPO practice by filing an admin-istrative appeal with the Ministry of Economic Affairs. The MOEA dismissed the appeal, and stated in its decision that based on national pol-icy considerations and the principles of recip-rocity and equality, the IPO's refusal, for the time being, to handle priority claims based on Mainland-Area applications, was not inappro-priate. The main reasons were as follows:

Under the Paris Convention, the basis for recognition of international priority claims are reciprocity and equality. The proviso to Point 6 of the Regulations Governing Handling of Patent Applications Filed by Taiwanese Compatriots, issued by the Mainland Area's State Intellectual Property Office on 23 April 1993, provides: "A priority claim made by an applicant based on a patent application filed in Taiwan shall not be recognized."

The issue of whether the ROC and the Mainland China reciprocally recognize inter-national priority claims involves cross-strait policy. In orders dated 27 May 2002 and 19 November 2003, the Mainland Affairs Coun-cil stated: "The issue of whether to recognize Mainland China patent and trademark priority claims impinges upon cross-strait relations and the overall planning of policy toward Mainland China. It will therefore be dealt with separately at the appropriate time giving regard to the status of cross-strait interaction."

Lee and Li will continue to monitor the devel-opment of practice regarding this issue, and keep readers updated.