Newsletter
AGREEMENT ON COOPERATION CONCERNING MUTUAL REC-OGNITION OF INTELLECTUAL PROPERTY RIGHTS BETWEEN THE UK AND THE ROC
On 20 March 2000, the Taipei Representative Office in the United Kingdom and the British Trade and Cultural Office in Taipei signed the Agreement on Cooperation Concerning Mutual Recognition of Intellectual Property Rights on behalf of the United Kingdom and the Republic of China (Taiwan). According to the agreement, nationals (natural or legal persons) of the parties may receive the following reciprocal treatments as of 20 March 2000:
As of 20 March 2000, if a national of either party (a natural person or a legal person), or his successor, has filed a patent application or an application for registering an industrial de-sign in a signatory to the Paris Convention or a member of the World Trade Organization that has established reciprocity with the ROC on or after 20 March 2000, or has filed a patent ap-plication (invention, new utility model or new design patent applications) in the ROC on or after 20 March 2000, said national can claim priority for his patent application filed in UK or the ROC, as the case may be.
Given the execution of the agreement, as of 20 March 2000, patent applicants from the UK may claim priority for their ROC patent ap-plications based on corresponding basic ap-plications first filed on or after 20 March 2000 in the UK or any other country that has estab-lished reciprocity with the ROC. Thus far, there are eight such countries, including Aus-tralia, Germany (for invention and utility model patents only), Switzerland, France, Ja-pan, USA, Liechtenstein (for invention and utility model patents only), and the UK.
Under the current patent practice of the ROC, priority claim based on a corresponding EP application or a PCT application is not al-lowed (except for a PCT application that is filed with the WIPO or the Australian Indus-trial Property Organization as the receiving office by an Australian national, in which Australia is identified as a designated country). Therefore, it is important for a U.K. applicant to choose a "national filing" as the first patent filing in the world so as to claim priority for his corresponding ROC application. In addi-tion, the first filing country selected by a U.K. applicant must be one of the countries that have established reciprocity with the ROC.
Either party will accept a patent application covering a microorganism per se invention, that is filed by a national from the U.K. or the ROC, as the case may be, and grant patent right to such patent application in accordance with the relevant laws. Under the current practice, a patent application covering micro-organism per se inventions is acceptable only if the patent application is filed by an ROC applicant or a foreigner whose home country has established reciprocity with the ROC for providing same protection to ROC nationals. The agreement now provides UK nationals with a right to seek patent protection on mi-croorganism per se inventions as of 20 March 2000. In addition to the U.K., the USA and Australia have also established reciprocity with the ROC for patent protection on micro-organism per se inventions.
For the purpose of patent disclosure, both parties will recognize microorganism deposits made in accordance with the relevant provi-sions of their national laws. Since the ROC is not a signatory to the Budapest Treaty, a de-posit made with a depository recognized under the Budapest Treaty is not admitted in the ROC. According to the Patent Law, when filing a patent application covering a micro-organism-related invention, the patent appli-cant must deposit the relevant microorganism with the depository designated by the ROC (i.e., Food Industrial Research Development Institution in Taiwan, ROC; FIRDI) before filing a patent application in Taiwan. The above deposit requirement can be waived if the microorganism involved can be easily obtained by persons skilled in the art. Despite the agreement, for patent applications filed by UK nationals in the ROC, the above deposit requirement will remain unchanged (i.e., a UK national must comply with the local deposit requirement as stated above prior to filing a patent application in the ROC). However, attention should be paid to an anticipated change of the deposit requirement, which will be substantiated after the ongoing amendment of the Patent Law is completed. The ROC government has proposed amendments to the Patent Law to the Legislation Yuan for review in December 1999. According to the proposed amendments, an applicant of a microorgan-ism-related patent application still needs to deposit the relevant microorganism with the local depository before filing an ROC patent application. However, if the concerned mi-croorganism has been deposited with a foreign depository recognized by the ROC before fil-ing the ROC patent application, the depository requirement will be satisfied under the fol-lowing conditions:
1.on the date of filing the ROC patent ap-plication, the applicant has declared to the IPO the deposit already made with the foreign depository; and
2.the applicant has completed the deposit with the FIRDI and, within 3 months from the date of filing the ROC patent applica-tion, submit to the IPO the deposit cer-tificate issued by the FIRDI and pertinent documents evidencing the deposit with the foreign depository.
After the proposed amendment is passed and takes effect, U.K. nationals filing microor-ganism-related patent applications in the ROC may claim the above treatments as prescribed in the amended Patent Law.
Both parties will allow patent term extension ("PTE") for patents in certain technology areas in accordance with the relevant provisions of its national laws, and the maximum extended term will be five years.
According to Article 51 of the Patent Law, PTE can be granted for a patent covering a pharmaceutical-related invention or an ag-richemical-related invention (either a product patent or a manufacturing process patent) if the practice of the concerned ROC patent must obtain a permit from the ROC government first and if the process for obtaining the permit exceeds 2 years from the publication date. The extended patent term allowed under a PTE request will be between 2 to 5 years, depending on the actual amount of time spent in acquiring the government's permit after the publication date. In addition, a patentee must file a request for PTE within 3 months from the issuance of the first permit and 6 months prior to the expiration date of the original patent term. According to the Patent Law, a foreign patentee's request for PTE will be al-lowed only if the home country of the patentee has signed a treaty or agreement with the ROC for PTE protection. Prior to the execution of the agreement, only the USA and Australia have established reciprocity with the ROC for PTE protection. As of 20 March 2000, the UK patentees may request for PTE for their ROC pharmaceutical-related or agrichemical- related patents pursuant to the Patent Law.
For further information about how to claim pri-ority, seek patent protection on microorganism per se inventions, make microorganism deposits in the ROC as well as seek patent term extension for a pharmaceutical-related or agrichemi-cal-related patent in the ROC, readers are wel-come to contact Lee & Li.