立揚國際專利商標事務所

Process | Priority Right | Notice

What is patent? When we want to protect the rights of an invention or a creation, we apply through the Taiwan Intellectual Property Office (hereinafter referred to as “TIPO”) for a patent. Patent rights are granted after the application is examined and approved under the Patent Act. The patentee of a patented article shall have the exclusive right to preclude others from manufacturing, selling, contracting to sell or use, or importing the patented article for any of the above purposes without his/her prior consent. The patentee of a patented process shall have the exclusive right to preclude others from using such process and from using, selling, contracting, or importing finished products that are made by the patented process without his/her prior consent. These rights are called “patent rights.”

FROM TIPO 

Patent prosecution examination process and administrative remedy：

 FROM TIPO

Countries of mutual recognition for priority right (i.e. international priority right)：

What is “international priority right”? The “international priority right” was first revealed in Article 4 of Paris Convention, which allowed applicant of member countries to file the same patent in other member countries and then claim priority for his first patent with 12 or 6 months of priority right duration according the categories of patent after his/her initially file domestically. Such system is to protect applicant from losing patentability and failing to be granted in other member countries merely because of laid-open or practice of first patent application in original filing country or anticipating of filing in other member countries. According to the Patent Act, a patent applicant, who has filed his/her first patent application legally in respect of an invention in a member of the World Trade Organization (hereinafter referred to as the "WTO") or in a foreign country which allows ROC nationals to claim priority based on reciprocity and has filed his/her patent application for the same invention in the ROC within 12 months (“design” refers to 6 months) from the filing date of his/her first patent application in said foreign country, may claim the filing date of said foreign application as the priority date, and use it as the reference date in determining whether the invention complies with patentability of patents, such as novelty, loss of legal fictitious novelty, inventive step, and first to file. ROC is not a member country of Paris Convention, however, the claim of priority right from all WTO member countries will be accepted after joining WTO base on the regulation and obligation of Article 2 of TRIPS.

According to Paragraph.3, Article 27 of Patent Act, if the foreign applicant is a citizen of a non-member country of the WTO and his/her home country does not maintain a relation for mutual recognition of priority rights with the ROC but the applicant has a residence or business office in a member country of the WTO or in the territory of a reciprocal country, the applicant shall also be entitled to claim priority.

※ Member countries of WTO and validating date of priority right of mutual recognition countries ( Patent Examination Guideline Sec.2.5.2)

ROC became a member of WTO since Jan 1, 2002, and thus, the claimed priority date from the applicant of WTO member is as early as Jan 1, 2002.

Patent application from mutual recognition countries claimed international priority shall not claim the priority date earlier than validation date of recognition on both side. According to Paragraph 3, Article 27, Patent Act, the applicant may claim priority date as early as Jan 1, 2002.

Besides, the country of applicant from later application and the country accepting the initial application who refers to plurality of mutual recognition date shall not claim priority date earlier than the latest validation date of mutual recognition.

The following list is a summary of validation date refers to the countries having mutual recognition for priority right before ROC became WTO member in Jan 1, 2002.

 FROM TIPO

Notice：

1. Patentee may assign or license his/her invention to others.
2. A joint-owner of an invention patent shall not assign his/her share to another person without the consent of all the other joint-owners.
3. The assignment, trust or licensing of an invention to another person to practice the invention, shall not be asserted against any third party, unless it has been registered with the Patent Authority.
4. If the patentee fails to pay the patent annuity for the grace period, the patent right shall extinguish from the day following the expiration of the original statutory period for such payment.
5. An invention patentee shall mark the serial number of patent certificate on his/her patented article or the packaging, and may require that his/her licensee or the grantee of compulsory license do the same. In case of failure to affix such marking, no claim for damages shall be allowed.
6. The litigation of patent infringement is indictable only upon complaint, and the litigation shall be file within 2 years since aware of been infringed or within 10 years from the time of infringement act.
7. The application of “associated design” is to fully protect the patent goods, preventing others from circumvention, confuse and defraud with similar product, and resulting in damage of patent right.
8. If the basic information of patentee, such as address,  representative, name of patentee, etc, is changed, the notice shall be submitted to Li-Young immediately in order to perform the relative alteration to the Competent Authority, in case any unexpected results.
9. For promotion and sell to global market concern, after the patent is granted domestically, the filing of the said patent to China or other countries shall be performed as well as informed to Li-Young to prolong the laid-open domestically, in case any prosecution problem in international filing.

   FROM  TIPO