With increased trade and closer relations between Taiwan and the China, patent applicants in Taiwan, as of Nov. 22, 2010, can now claim priority to an earlier-filed Chinese patent application and vice versa. Claiming priority enables a later-filed application to be treated as if it was filed on the same date as the earlier application.
Previously, Taiwan applicants needed to first file patent applications in a third jurisdiction (e.g., the United States) to claim the benefit of priority in Taiwan and China even if patent protection in the third jurisdiction was not of interest. Alternatively, Chinese applicants could file a Patent Cooperation Treaty (PCT) application first with the Chinese State Intellectual Property Office and then claim priority within one year in Taiwan. The right to claim priority is not retroactive and only applies to first filings made on or after Sept. 12, 2010.
This change in law occurred alongside the "Cross-Strait Economic Cooperation Framework Agreement" and the "Cross-Strait Intellectual Property Rights Protection Cooperation Agreement,” which were signed on June 29, 2010 during the fifth meeting between Taiwan's Straits Exchange Foundation and China's Association for Relations across the Taiwan Straits. Both Taiwan and China have started to receive patent applications and recognize priority claims.
To claim priority in China to a Taiwanese patent application, the applicant should (1) within the priority period (six months for design and 12 months for invention and utility model); (2) make a declaration in the request when the application is filed, and insert "Taiwan region" as the original authority, as well as the filing date and application number of the priority application; (3) submit a copy of the priority application that was certified by the original authority within three months from the filing date of subsequent application; and (4) pay the fee for claiming priority when paying filing fee.
To claim priority in Taiwan to a Chinese patent application, the applicant may (1) within the priority period (six months for design and 12 months for invention and utility); (2) claim a priority to a Chinese application; and (3) submit a copy of the priority application that was certified by the original authority within three months from the filing date of the subsequent application.
Applicants must still comply with any export control restrictions before filing an application outside of the priority jurisdiction. For example, for a first filing for a China-originated invention, the patent applicant must pass a secrecy review by the State Intellectual Property Office before filing in Taiwan, which Taiwan does not require.
The agreements also enable priority claims to trademark applications and plant variety right applications. The agreements further call for discussion on the mutual use of patent examination results. If implemented, this could lead to speedier examinations similar to the Patent Prosecution Highway in the United States.
Wininger and Wise are partners at Perkins Coie LLP.