The Supreme Administrative Court rendered the 108-Pan-518 Decision of November 13, 2019 (hereinafter, the “Decision”), holding that whether the requirement for “identical invention” under Article 28 of the Patent Law is met should be determined based on whether the invention set forth in the patent application claims is disclosed in the specification, patent application claims or drawings of the counterpart serving as the basis for claiming the right of priority.
According to the facts underlying this Decision, the Appellee applied to the Appellant and claimed the right of priority based on the US counterpart of the application (hereinafter, the “Priority Counterpart”). The Appellant issued a letter after its examination (hereinafter, the “Application at Issue”) to inform the Appellee to submit the original of the supporting documentation for claiming a foreign priority right. After submitting a photocopy of the electronic notification receipt, application receipt and uncertified copy of specification concerning the US application of the Priority Counterpart, the Appellee asserted that the requirement for documents substantiating an application has been accepted under Article 29 of the Patent Law had been met. The Appellant subsequently issued a disposition (hereinafter, the “Original Disposition”) that the application should be deemed to have been filed without claiming a right of priority. Dissatisfied, the Appellee filed an administrative appeal, which was dismissed. Also dissatisfied, the Appellee brought an administrative action with the Intellectual Property Court (hereinafter, the “Original Trial Court”) to set aside the decision on the administrative appeal and the portion of the Original Disposition finding that “it shall be deemed that no right of priority had been claim in this matter” and to compel the Appellant to render a disposition that grants the priority right. The Original Trial Court subsequently set aside the decision on the administrative appeal and the Original Disposition and ruled that the Appellant should render a disposition that grants the priority right. Dissatisfied, the Appellant appealed.
According to this Decision, Article 28 of the Patent Law provides that an international right of priority means that an applicant who has filed a patent application in a country or a member of the World Trade Organization which mutually recognizes a priority right with Taiwan may claim the application date of such foreign patent application as the priority date during the statutory period (12 months for invention and utility model patents) when filing a patent application in this country over the same invention. Such date serves as the record date for determining if the application in Taiwan meets patentability criteria such as novelty, presumed loss of novelty or inventive steps and the first-to-file principle. The determination standard for “identical inventions” is whether the invention set forth within the patent application claims filed in Taiwan is disclosed in the specification, patent application claims or drawings of the Priority Counterpart. Although Article 29, Paragraphs 1 and 2 of the Patent Law do not specifically indicate the contents of the “documents substantiating the application has been accepted,” still the purpose for having an applicant submit “documents substantiating the application has been accepted” is to allow the patent authority to determine if the priority claim asserted by the applicant meets the criteria for an international right of priority. Articles 28 and 29 of the Patent Law of Taiwan were formulated in reference to the Paris Convention. The so-called “documents substantiating the application has been accepted” should be substantiated by a proof issued by the patent authority of the country that has accepted the Priority Counterpart, and such proof cannot be superseded by a simple receipt or notice. If an applicant fails to state the application date of the first patent application or the country or Word Trade Organization member state that has accepted the application or to submit a document which supports the fact that the application has been accepted as evidenced by a proof issued by the country or the World Trade Organization member state that has accepted the Priority Counterpart, it shall be deemed that no priority right is claimed pursuant to law.
Therefore, according to this Decision, the Appellee’s assertion that since Article 29, Paragraph 2 of the Patent Law neither limits the format of documents nor authorizes the Appellant to impose any regulation in this regard, the conclusion that the “documents substantiating an application has been accepted” under Article 29 of the Patent Law should be interpreted under the principle of legal reservation as formal requirements such as the specifications and drawings of the earlier foreign application and/or official authentication and their translations should not be drawn is not acceptable. Therefore, the appeal of this case is well-grounded.