Transitional provisions: Priority claim under WTO membership, etc.

In respect of a patent application that, prior to the implementation of the November 29, 2011, amendment of this Act, violates the former Paragraph 1 of Article 28, Paragraph 1 of Article 28 applicable mutatis mutandis under Article 108, or Paragraph 1 of Article 28 applicable mutatis mutandis under Paragraph 1 of Article 129 of this Act, and therefore cannot claim priority pursuant to the former Paragraph 3 of Article 28, Paragraph 3 of Article 28 applicable mutatis mutandis under Article 108, or Paragraph 3 of Article 28 applicable mutatis mutandis under Paragraph 1 of Article 129 of this Act, in the event that the patent application is still pending at the time of the implementation, if, with respect to a patent application for invention and utility model, the period of sixteen (16) months after the earliest priority date has not expired, and if, with respect to a patent application for design, the period of ten (10) months after the earliest priority date has not expired, Paragraph 4 of Article 29, Paragraph 4 of Article 29 applicable mutatis mutandis under Article 120, and Paragraph 4 of Article 29 applicable mutatis mutandis under Paragraph 1 of Article 142 shall apply.

In respect of a patent application that, prior to the implementation of the November 29, 2011, amendment of this Act, violates the former Paragraph 2 of Article 28, Paragraph 2 of Article 28 applicable mutatis mutandis under Article 108, or Paragraph 2 of Article 28 applicable mutatis mutandis under Paragraph 1 of Article 129 of this Act, and therefore cannot claim priority pursuant to the former Paragraph 3 of Article 28, Paragraph 3 of Article 28 applicable mutatis mutandis under Article 108, or Paragraph 3 of Article 28 applicable mutatis mutandis under Paragraph 1 of Article 129 of this Act, in the event that the patent application is still pending at the time of the implementation, if, with respect to a patent application for invention and utility model, the period of the sixteen (16) months period after the earliest priority date has not expired, and if, with respect to a patent application for design, the period of ten (10) months after the earliest priority date has not expired, the provisions of Paragraph 2 of Article 29, Paragraph 2 of Article 29 applicable mutatis mutandis under Article 120, and Paragraph 2 of Article 29 applicable mutatis mutandis under Paragraph 1 of Article 142 shall apply.

Conversion of application

Where a patent application originally filed for invention or design is converted into a patent application for utility model, or where a patent application originally filed for utility model is converted into a patent application for invention, the filing date of the original patent application shall be deemed to be the filing date of the converted patent application.

A request for patent conversion shall not be made under any of the following circumstances:

1. after a written decision allowing the original patent application is served;
2. two (2) months after the date on which a written decision rejecting the original patent application for invention or design is served; or
3. thirty (30) days after the date on which a written decision rejecting the original patent application for utility model is served. "A converted patent application shall not extend beyond the scope of content disclosed in the description, claim(s), or drawing(s) of the original patent application as filed.

Details >

Provisions applied mutatis mutandis to utility model patent "Article 22, Article 23, Article 26, Articles 28 to 31, Article 33, Paragraphs 3 to 7 of Article 34, Article 35, Paragraphs 2 and 3 of Article 43, Paragraph 3 of Article 44, Paragraph 2 of Article 46, Paragraph 2 of Article 47, Article 51, Paragraphs 1, 2 and 4 of Article 52, Paragraphs 1, 2, 4 and 5 of Article 58, Article 59, Articles 62 to 65, Article 67, Paragraphs 2 and 3 of Article 68, Article 69, Article 70, Articles 72 to 82, Articles 84 to 98, and Articles 100 to 103 shall apply mutatis mutandis to utility model patent.

Details >

Priority claim under WTO membership, etc.

Where an applicant has first applied for a patent in a foreign country, which reciprocally allows ROC nationals to claim patent priority, or with any member of the World Trade Organization (WTO), the applicant may claim priority in respect of an ROC patent application for the same invention if the ROC patent application for the same invention is filed within twelve (12) months after the filing date of the said first patent application.

Where an applicant claims two or more priorities in respect of a patent application, the period referred to in the preceding paragraph shall be on the basis of the earliest priority date.

If a foreign applicant is a citizen of a non-member of the WTO and whose home country does not mutually recognize priority with the ROC, but the applicant has domicile or business establishment in any member of the WTO or in the territory of a reciprocal country, the applicant shall also be entitled to claim priority in accordance with the provisions set forth in Paragraph 1.

For a patent application filed with priority, examination on its patentability shall be based on the priority date.

Details >

Claim of priority

An applicant claiming priority in accordance with the preceding article shall simultaneously make a declaration with respect to the following when filing a patent application:

1. the filing date of the first patent application;
2. the country or member of WTO in which the first patent application was filed; and
3. the application number of the first patent application.

Within sixteen (16) months after the earliest priority date, the applicant shall submit a certified copy of the first patent application issued by the foreign patent authority under the preceding paragraph.

In case of a violation of Subparagraph 1 or Subparagraph 2 of Paragraph 1 or the preceding paragraph, the priority claim shall be deemed not to have been made.

Where an applicant unintentionally fails to claim priority claim at the time of filing, or where the priority claim is deemed not to have been made as prescribed in violation of Subparagraph 1 or Subparagraph 2 of Paragraph 1, the applicant may, within sixteen (16) months after the earliest priority date, apply for reinstatement of priority claim, pay the required fees and undertake actions set forth in Paragraph 1.

Details >