Special Notes on Taiwan Patent Prosecution

It may be quite surprising for some people that Taiwan has had Patent Law since 1944. This makes Taiwan one of the earliest countries to have adopted patent law. For the last half century, Taiwan's development model has shifted from agriculture and small manufacturing to high-tech industrial production. Over the years, The Patent Act has been amended many times to pursue the international consensus and coincide with global patent practice. Because there exists several political issues relating to Taiwan’s identity, Taiwan has not been a signatory of many global patent treaties. As a result, several practices, specific to Taiwan have been created. In this article we introduce these special provisions and also discuss some major developments relating to patent prosecution in Taiwan.

(1) Claiming Priority in Taiwan 
A right of priority is one of the most important rights to be considered when working in international patent applications because it allows a patent applicant the right to track back its filing date to the first filing application date. While a right of priority has been regulated in the Patent Act in Taiwan, the rules are not all consistent with the general global practice as found in the US, Europe, or Japan. 

A. Changes Following WTO membership:
Before Taiwan became a World Trade Organization (WTO) member, patent applicants could not claim priority when they subsequently filed patent applications in most countries in the world. One of the most important treaties for patent priority claims in the world is the Paris Convention. Unfortunately, Taiwan is not a member so it was unable to enjoy the cooperative benefit of international patent prosecution. During the mid-1990s, Taiwan put its efforts toward forming bilateral patent recognition agreements with its major trading partners including the United States, Australia, Swiss, Japan, Germany, the United Kingdom, France, Austria, New Zealand, the Netherlands and Liechtenstein and was successful in gaining reciprocal recognition with those countries. It indeed facilitated the international patent filing matters but this was still not enough. As Taiwan’s industry became playing a more important role in the global manufacturing chain, having only eleven countries was unable to satisfy the needs of the global patent prosecution business.

In 2002, Taiwan joined the WTO and agreed to comply with the terms of the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPs). Now, an applicant can file a patent application in Taiwan within twelve (12) months of the earliest date on which any corresponding application has been filed in Taiwan or in a WTO member country. Since Taiwan joined the WTO on January 1, 2002, the priority date cannot be earlier than January 1, 2002.

Article 27 of the Patent Act particularly stipulates that a patent applicant who has filed his first patent application in a WTO member state may claim priority for his Taiwan application within twelve (12) months. If the foreign applicant is a citizen of a non-member country of the WTO but has a place of business or residence in a WTO member country, he may also claim priority in the Taiwan application. In this regard, the application in Taiwan will be treated as if it had been filed on the same date as the first application filed in the WTO member country.

As Taiwan and China’s political relationship remains complicated and unsolved, it can be very confusing to a foreign patent attorneys/agent to know whether it is necessary to file a separate patent application in Taiwan after filing a patent application in China. In fact, Taiwan’s government and China’s government have respective political power over the patent applications filed in their own territory. A patent application granted in China cannot be enforced in Taiwan. In addition, China and Taiwan do not admit priority right for each others’ patent application (even though both are members of the WTO). Thus, an applicant that files a patent application in Taiwan is unable to claim priority based on his Taiwan’s patent application when he subsequently files the corresponding application in China, and vise versa. In order to keep the benefit of the earliest filing date, it is necessary to respectively file patent applications in Taiwan and in China especially when an applicant chooses Taiwan or China as the first filing country for his global patent prosecution.

B. Relationship with the PCT
A majority of the world's countries are signatories to the Patent Cooperation Treaty (PCT), including all of the major industrialized countries. Taiwan, however, is still not a member of the PCT. When filing under the PCT procedure, an applicant is allowed to submit a request to enter a specific national phase within thirty (30) months after the international filing date. Since Taiwan is not a PCT member, however, the applicant cannot file an application into Taiwan through PCT procedure and the said thirty (30) month grace period is not applicable. In fact, we have heard that some foreign applicants have lost the right to claim priority, mistakenly believing that Taiwan is a PCT member.

Under the Paris Convention, any filing that is equivalent to a regular national filing under the domestic legislation of any country of the Union or under bilateral or multilateral treaties concluded between countries of the Union shall be recognized as giving rise to the right of priority. As a result, Taiwan’s Intellectual Property Office (TIPO) followed this principal and announced on November 27, 2002 that any applicant from a WTO member country that files a patent application in Taiwan based on a PCT application and such PCT application designates any WTO members as the designated countries, may claim a right of priority if the application is a legal application.

Although an applicant may file applications in Taiwan claiming a right of priority based on a PCT application if it is in accordance with the said criteria, there is not the same thirty (30) month grace period allowed. An applicant must file the Taiwan application within twelve (12) months for an invention patent or utility model application and within six months for a design application when filing a PCT application.

Finally, since Taiwan is not a PCT member, a Taiwan application is unable to be the base application to claim a right of priority for a PCT application.

C. Relationship with EPC
The previously mentioned guideline provided by TIPO announced on November 27, 2002 also includes European Patent Convention (EPC) applications. In other words, an applicant from a WTO member country that files a patent application in Taiwan based on an EPC application and such EPC application designates any WTO members as the designated countries, may claim a right of priority.

In addition, even though the recognition of priority rights in EPC from a first filing in Taiwan is impossible because Taiwan is not a member of the Paris Union (Article 87(1) EPC), EPC explained that as most EPC contracting states are also members of the WTO, it should be possible to obtain protection in Europe via the national route under Article 87(5) of the EPC. Thus, the November 2000 revised EPC allows claiming priority from a Taiwanese first filing application in an EPC application This takes effect on 13 December 2007.

D. Foreign Provisional Application
There are some countries such as the United States and Australia that provide a provisional application filing procedure. A provisional application allows an applicant to obtain a filing date in advance before filing the regular application (non-provisional application). After filling for a provisional application, a non-provisional application with the desired claims shall be filed, or the provisional application shall be converted into a non-provisional application within a specific period of time (for example 12 months in US and Australia). Thus, a provisional application is deemed as the “first filing” in Taiwan when claim the priority right for the corresponding Taiwan application. In general practice, the non-provisional application will be updated from the provisional application and new matters may be added. However, only the foreign application containing the same invention can be used to claim priority. Therefore, if an application filed in Taiwan is based on the non-provisional application with a different claim scope or technology from that disclosed in the provisional application, then the non-provisional application shall be the base application for that portion of the claims. Thus, if there are amendments between a foreign provisional application and a foreign non-provisional application, it will be suggested to claim the foreign provisional and non-provisional application as the foundational application and submit the relevant certified application documents at the same time for TIPO to ensure applicant’s right of priority.

(2) Novelty grace period
Needless to say, an invention has to be kept secret before it is filed as an application for a patent. In some countries, such as the United States, a grace period is set to allow an inventor to publish anywhere, or make his invention public use or on sale in US within one year prior to the filing date. Compared to US, the Taiwan Patent Act provides more restricted conditions on the grace period. The Taiwan Patent Act merely provides six (6) months for the grace period instead of twelve months. In addition, the grace period can only be claimed under the following condition:

• 1) the publication is a result of research or experiment;
• 2) the publication is a result of being exhibited at an exhibition sponsored or approved by the government; or
• 3) the invention has been disclosed in an occasion not intended by the patent applicant.

Similar regulations also apply to designs, but designs do not involve research and experiment and as such, the said conditions related to research and experiments do not apply. Furthermore, these criteria also apply if the publication occurs in foreign country. Many foreign applicants are not aware of the Taiwan grace period regulations and lose the opportunity to obtain a Taiwan patent. It is important to be aware of these particular rules when planning to file a patent in Taiwan.

(3) Patent Ineligibilities
Compared to the US and some European countries, Taiwan’s government is more conservative in allowing patents related to biological material. For example, under Article 24 of Taiwan Patent Act, the following items cannot be patented in Taiwan:

• Animals, plants, and essentially biological processes for production of animals or plants, except the processes for producing microorganisms;
• Diagnostics, therapeutic, or surgical operation methods for the treatment of humans or animals;
• An invention that is contrary to public order, morality, or public health.

A. Limitations in Patents of Animal, Plant and Essentially Biological Processes
Taiwan is not like some countries (such as the US and Australia) that provide plant patent protection. Taiwan also rejects providing any protection regarding the patent protection of animals and essentially biological process of animals or plants except that a process for producing microorganisms is patentable. However, this does not mean biological materials are unable to have a patent in Taiwan. In fact, if a patent application merely combines a natural or biological method to create a new variety, such application is acceptable under Taiwan’s Patent Act. For example, if the breeding method of new animal or plant variety merely comprises natural processes such as crossing or selection, it will be a biological method such as, for example, crossing, inter-breeding, or selective breeding. In the case of the selective breeding of horses, since it only involves the selection of the breeding horses and the confinement of the horses having specific characteristics, it is a patentable biological method.

B. Limitation in Diagnostic, Therapeutic, or Surgical Operation Methods
Accordingly, it is obvious that the “therapeutic method” is not a patentable subject in Taiwan. The Examination Standards of Patents further stipulates that claims in the following formats are considered to be therapeutic methods:

• “A method for treating disease X, comprising …”
• “Use of substance Y in the treatment of disease X …” 

Claims drafted in the forgoing way are not patentable in Taiwan.

Although the Taiwan Patent Act restricts “therapeutic methods”, it does not mean a therapeutic medicine or a substance cannot obtain a Taiwan patent. If an inventor wants patent protection for his therapeutic invention, the applicant can draft a patent application with claims in the following manner:

• “A composition for treating disease X, comprising …”
• “A method for producing a substance for treating disease X, comprising …
• “Using substance Y in producing medication for treating disease X …”

The patent claims drafted in the above ways are not considered as therapeutic methods and are patentable according to the Examination Standards of Patents issued by TIPO.

C. Limitation Contrary to Public Order, Morality, or Public Health.
As the most critical technology in the biotech field, the patentability of human cloning is one of the hottest discussion topic in the patent law constitution. According to the previously mentioned prohibition clauses, human cloning is considered contrary to public order, morality, or public health and shall not be regarded as patentable subject matters. As human cloning is a very broad concept and there are some ambiguities, there is room to differential the patentable matters and unpatentable matters. TIPO is currently drafting guidelines that will provide a detailed explanation and definition of what human cloning is. We hope this guideline can successfully balance the interests of industrial development and the public interest.

(4) Deposit for Filing a Patent Application Containing Biological Material
Under paragraph 1, article 30 of Patent Act, in applying for an invention patent involving any biological material or the utilization of any biological material, the applicant shall, no later than the filing date, deposit the biological material at a local deposit institute designated by the Patent Authority and shall indicate in the application, the name of the deposit institute, and the date and the serial number of such deposit provided. The deposit is not required, however, if the biological material involved can be easily obtained by an ordinarily skilled person in the relevant art of the biological material. Currently, the Bioresource Collection and Research Centre (BCRC) is the aforementioned local deposit institute appointed by MOEA and it is the only institute appointed by the Taiwan government for the patented microbial materials deposit (www.bcrc.firdi.org.tw).

Since Taiwan is not a signing member of the Budapest Treaty, a patent applicant is unable to complete the deposit process for his biological material in a deposit institute recognized by the Budapest Treaty when filing a patent application for biological materials. Instead, he is required to deposit his biological material at the deposit Institute in Taiwan.

However, in the event the biological material involved has been deposited, before filing the patent application, at a foreign deposit institution which is recognized by TIPO (the qualified institution is the same as that recognized by the Budapest Treaty), there is a three month grace period to allow the applicant to complete the deposit process in Taiwan if the Applicant has stated such fact in the application. Within the said three (3) month period, the applicant is required to submit the deposit certificates issued by both the BCRC and the foreign deposit institution to complete the deposit process for his patent application.

Comment
The development of international patent prosecution changes very quickly. It is important for foreign attorneys practicing international patent prosecution to have at least a general understanding of some of the peculiarities of Taiwan practice as it may greatly influence the strategy of applying and prosecuting in Taiwan. In fact, there are many important acts that have been discussed or constituted this year and are planning to be executed in 2008, such as the establishment of the IP court, the new and particular dispute resolution procedure for IP cases, and also the new guidelines for Biotech and computer software. It is expected Taiwan’s IP practice will continue to encounter a very active and vigorous development in the coming year.