Statutory Periods That Start From "The Earliest Priority Date" Under The New Patent Act

01/01/2013

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The new Patent Act passed by the Legislative Yuan on 29 November 2011, which has been implemented as of 1 January 2013, can be regarded as the largest and most complicated amendment over the last decade; particularly, the changes of patent prosecution procedures in the new Patent Act will be the last thing to be ignored. For patent applicants, and patent attorneys and patent agents who handle patent affairs on behalf of their clients, it is necessary to pay attention to these changes, or the rights and interests may be affected by defects in prosecution procedures.
In particular, there are two important changes regarding the statutory period for submission of relevant supporting documents:
●	For applicants who claim international priority upon patent filing, the period of the certified priority document shall be provided (Paragraph 2, Article 29, new Patent Act)
	To protect the rights and interests of patent applicants, "International Priority" has been incorporated into the Patent Act of Taiwan since 1994. It is explicitly stated in the 1994 Patent Act that: "Where an applicant has duly filed his/her first patent application in a foreign country which reciprocally allows Taiwan nationals to claim priority, the applicant may enjoy priority if the patent application for the same invention is filed in Taiwan within twelve months from the filing date of the said first patent application" ("the patent firstly filed in a foreign country" shall be hereinafter referred to as the "basic application of priority.") There may be multiple priority claims in one patent application. For an application having priorities, examination of the requirements for patentability, such as novelty and non-obviousness, shall be based on the prior arts published before its "priority date" (i.e. the filing date of the basic application of priority,) rather than those before its "patent filing date" in Taiwan.
	According to the 1994 Patent Act, a patent applicant shall claim priority at the time of patent filing, and shall denote in the application the filing date and the case number of the basic application of priority, and the country accepting the said basic application. Furthermore, the applicant shall, within 3 months starting from the filing date, submit certified supporting documents issued by the foreign patent authority accepting the basic application of priority (hereinafter referred to as the "priority documents"); otherwise the priority will be lost. This system, which allows the ex post submission of priority documents, is preserved in several later amendments. In Article 28 of the 2004 Patent Act, implemented since 2004, the aforementioned "priority documents shall be submitted within 3 months starting from the filing date" was relaxed to "within 4 months starting from the filing date."
	However, in Paragraph 2, Article 29 of the new Patent Act, the statutory period for submission of the priority documents is amended to "within 16 months following the earliest priority date" from the aforementioned "within 4 months starting from the filing date." According to its legislative reasons, this amendment was made by referring to Paragraph 2, Article 43 of Patent Act of Japan and Article 52 of the Implementing Regulations to the Convention on the Grant of European Patents.
●	For patent applicants of biological materials or biological material-based invention, the period of the supporting documents of deposit shall be provided (Paragraphs 2 and 3, Article 27, new Patent Act)
	"New varieties of microorganism" became patentable subjects in the 1994 Patent Act; however, the applicants of the related patents are limited to nationals of Taiwan and of countries having a reciprocal relationship with Taiwan in respect of the new varieties of microorganism. Under the then-effective Patent Act , except microorganisms that are easy to obtain by a person skilled in the art, the applicant shall, before filing the application, deposit the said microorganism in a domestic depositary institution designated by the patent authority and submit the supporting documents of deposit issued by the depositary institution at the time of patent filing.
	In the Patent Act promulgated in October 2001, the aforementioned period for the submission of supporting documents of deposit was relaxed to "within 3 months starting from the following day of the filing date." This provision was followed by the 2004 Patent Act (nevertheless, in Patent Act 2004, the "new varieties of microorganism" were renamed to "biological materials or biological material-based invention").
	However, with regard to the aforementioned statutory period which has been used for decades, different norms were stipulated in the new Patent Act: According to Paragraph 2, Article 27 of the new Patent Act, the period for the provision of supporting documents of deposit has been changed to "within 4 months after the filing date"; and in Paragraph 3 of the same Article, it has been further stipulated that in respect of applications where an international priority is claimed, the period for the provision of supporting documents of deposit shall be "within 16 months after the earliest priority date." According to its legislative reasons, the latter was derived from Paragraph 2, Article 31 of the Implementing Regulations to the Convention on the Grant of European Patents.
The periods for submission of the aforementioned two supporting documents have both been changed to "within 16 months after the earliest priority date;" the starting bases of their calculation are both "the earliest priority date." Compared with the "patent filing date" used in older Acts as the starting point of statutory period, besides changes in practices, this new measure leads to legal interpretation issues as well.
●	Issues
	The claim of "priority" is not necessarily fixed. For example, a priority claim may be changed in the following three scenarios:
	1.	While the applicant claimed certain priority at the time of filing, the priority claim is later withdrawn due to certain considerations;
	2.	While the applicant did not claim certain priority at the time of filing, a claim is later added through the procedures of "reinstatement of priority claim" (Paragraph 4, Article 29 of the new Patent Act); and
	3.	While the applicant did claim certain priority, the priority is deemed as "unclaimed" by law due to the fact that the priority documents were not duly submitted within the statutory period (Paragraph 3, Article 29 of the new Patent Act).
	Under these circumstances, whether "the earliest priority date" will be changed accordingly will become an issue. Once "the earliest priority date" is changed, the statutory period for submitting the aforementioned "priority documents" and "supporting documents of deposit of biological material" will be changed as well; in other words, the periods for submission of these supporting documents may become floating periods and increase the difficulty and complexity of a patent applicant's management of statutory periods.
●	Position of TIPO
	For the aforementioned Scenario 1, in Chapter 7 "Priority, Grace Period" of "Section I: Procedural Review and Patent Management" of the "Patent Examination Guidelines" announced by the Taiwan Intellectual Property Office (TIPO) on 22 November 2012 and effective as of 1 January 2013, it is explicitly stated that:
	"Withdrawal of an international priority claim shall be made in writing before the decision of a patent application. The applicant of multiple priorities may withdraw all or part of the priority claims. Where the earliest priority date is changed due to the withdrawal of an international priority claim, if various periods starting from the following day of the priority date have not expired, the said periods shall be calculated from the following day of the changed earliest priority date or of the filing date."And,
	"Where multiple priority claims are made, all the statutory periods for submission of related supporting documents shall be calculated from the earliest priority date. The 'earliest priority date' refers to the earliest among all the filing dates of the multiple priority claims. If the priority claim with the earliest priority date is withdrawn within 16 months after the earliest priority date, then the second earliest priority date shall become the earliest priority date."
	In other words, when an applicant later withdraws a certain priority claim for some reason and the priority date of the withdrawn claim is the earliest among the priority dates of the multiple priorities originally claimed by the applicant, then "the earliest priority date" will be shifted to the next earliest priority date, and the starting dates of the aforementioned periods for submitting supporting documents will be deferred accordingly.
	From the above-quoted provisions in the Patent Examination Guidelines, it can be inferred that, in the TIPO's position, "the earliest priority date" shall be determined based on the patent applicant's own claim for priority, not the legally effective priority recognized by law or by the TIPO. Accordingly, for above Scenario 2, i.e. where an applicant adds a claim priority not originally claimed in accordance with the procedures of "reinstatement of priority claim" stipulated in Paragraph 4, Article 29 of the new Patent Act, if the priority date of the newly added priority claim is earlier than those of the priorities originally claimed, since the priorities claimed by the applicant are changed, the "earliest priority date" will be shifted to an earlier date, which results in the advance of the aforementioned periods for submission of the supporting documents.
	As for Scenario 3, i.e. the original priority claim is later deemed as "unclaimed" due to the applicant's failure in submission of the priority document, since the said legal effect becomes effective according to legal regulations (Paragraph 3, Article 29, new Patent Act) rather than "claims" made by the applicant himself, if the priority date of the priority deemed as "unclaimed" is the "earliest priority date" originally claimed, then the aforementioned periods for submission of supporting documents shall be calculated based on the "earliest priority date" originally claimed (that is, the one having been deemed "unclaimed"). In other words, the calculation of periods will not be changed due to a legal effect that becomes effective afterwards.
●	Examples
	If a patent applicant claims three priorities, A, B, and C, when he applies for a patent in Taiwan, and the chronological sequences of the priority dates of these priorities are a, b, and c (i.e. "the earliest priority date" is a), then the applicant shall provide priority documents of A, B, and C and/or supporting documents for deposit during the period of "a+16 months." However,
	1.	If the applicant withdraws the priority claim A during the period of "a+16 months," then the earliest priority date will be deferred to b and the applicant should submit priority documents of B and C, and/or supporting documents for deposit during the period of "b+16 months."
	2.	If the applicant later discovers a claimable earlier priority X, and its priority date is x, then the applicant may add the priority claim X in accordance with the "procedures of reinstatement of priority claim" during the period of "x+16 months." In the meantime, "the earliest priority date" will be advanced to x, and the applicant should provide submit priority documents for X, A, B and C, and/or supporting documents for deposit during the period of "x+16 months."
		In the event the applicant intends to additionally make an earlier priority X through the reinstatement procedure, he shall evaluate and make sure whether it is possible to submit the priority documents, originally-claimed three priorities A, B and C, once the statutory period is advanced to "x+16 months" because of the addition of X.
	3.	If the applicant claims three priorities, A, B, and C, but fails to provide the priority documents for A during the period of "a+16 months," said priority A will be deemed as "unclaimed." Under such circumstances, the periods for submitting priority documents for B and C and/or the supporting documents for deposit will still be calculated based on "a+16 months" because A is still the earliest priority claimed by the applicant.
		If, before the period "a+16 months" expires, the applicant finds and confirms that the priority document for A will not be available in due course, but will still be possible to have the priority documents for B and C ready some time later, the applicant may decide to withdraw the claim of priority A within the period "a+16 months" so as to make the "earliest priority date" deferred to b. By doing so, the statutory period for submitting priority documents for B and C can be extended to "b+16 months."
Besides the aforementioned periods for submitting supporting documents of priority and deposit, periods using "the earliest priority date" as the starting points can also be seen in "the early publication of invention patent application." In Paragraph 1, Article 37 of the new Patent Act, if an invention patent application does not violate the formality requirements and there are no reasons preventing it from being laid open, the application shall be laid open from "18 months after the filing date"; however, if two or more priorities are claimed in the said application, the calculation of the laid-open period shall be made based on "the earliest priority date." In other words, should there be any event of the aforementioned changes of "the earliest priority date," the laid-open date of the invention patent application may be changed accordingly.