Taiwan Developing special procedures for patent prosecution

Formosa TransnationalTaiwanDeveloping special procedures for patent prosecutionwas still not enough. As Taiwanese industry began to play a more important role in the global manufacturing chain, the ability to claim priority in only 11 countries was insufficient 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. An applicant can now file a patent application in Taiwan within 12 months of the earliest date on which any corresponding application has been filed in another WTO member country. As Taiwan joined the WTO on January 1 2002,the priority date cannot be earlier than that date.Article 27 of the Patent Act provides that a patent applicant that files an initial patent application in a WTO member state may claim priority for a Taiwan application within 12 months. If the foreign applicant is a citizen of a country that is not a WTO member, but has a place of business or residence in a WTO member country, he or she may also claim priority for an application in Taiwan. In this regard, the Taiwanese application will be treated as if it had been filed on the same date as the first application filed in the WTO member country.As the political relationship between Taiwan and China remains unresolved, foreign patent attorneys and agents do not always know whether it is necessary to file a separate patent application in Taiwan after filing a patent application in China. In fact, the Taiwan and Chinese governments control only 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 rights for each other’s patent applications (even though both are WTO members). Thus, an applicant that files a patent application in Taiwan is unable to claim priority based on his or her Taiwan patent application when subsequently filing a corresponding application inTaiwan has had specific patent law since 1944. It was one of the first countries to adopt patent legislation. Since then, Taiwan’s industrial focus has shifted from agriculture and small manufacturing to high-tech industrial production. The Patent Act 1944 has been amended many times to follow international trends and remain consistent with global patent practice. As a result of the political issues relating to Taiwan’s identity,Taiwan is not a signatory to many global patent treaties.Instead, various patent practices specific to Taiwan have been established. This chapter considers these special provisions and discusses some major developments relating to patent prosecution in Taiwan. Claiming priorityThe right of priority is one of the most important rights to be considered in international patent applications because it gives a patent applicant the right to track its filing date back to the date of filing the first application.Although the Patent Act provides for a right of priority in Taiwan, these rules are inconsistent with general global practice.Changes following WTO membershipBefore Taiwan became a member of the World Trade Organisation (WTO), Taiwanese patent applicants could not claim priority if they subsequently filed patent applications in most countries in the world. As Taiwan is not a member of the Paris Convention, a key document for priority claims, it was unable to enjoy the cooperative benefits of international patent prosecution. In the mid-1990s Taiwan focused on forming bilateral patent recognition agreements with its major trading partners (Australia, Austria, France, Germany, Japan,Liechtenstein, the Netherlands, New Zealand,Switzerland, the United Kingdom and the United States)and gained reciprocal recognition with those countries.Although this facilitated international patent filings, it229Building and enforcing intellectual property value 2008Taiwan Formosa Transnational230Building and enforcing intellectual property value 2008impossible because Taiwan is not a member of the Paris Convention (Article 87(1) of the EPC), the EPC states that as most EPC contracting states are also members of the WTO, it should be possible to obtain protection in Europe through the national route under Article 87(5) of the EPC. Thus, the November 2000 revision of the EPC allows an EPC application to claim priority on the basis of a first filing in Taiwan. This will come into effect on December 13 2007.Foreign provisional applicationSome countries, such as Australia and the United States, provide for a provisional application filing procedure. A provisional application allows an applicant to obtain a filing date in advance of filing the regular (non-provisional) application. After filing a provisional application, the non-provisional application must be filed or the provisional application must be converted into a non-provisional application within a specific timeframe (eg, 12 months in Australia and the United States). Thus, a provisional application is deemed to be the first filing in Taiwan when claiming a priority right for the corresponding Taiwan application.In general, the provisional application will be updated to form the non-provisional application, with the addition of new material as necessary. However, only the foreign application for the same invention can be used to claim priority. If an application filed in Taiwan is based on a non-provisional application with a different claim scope or for different technology from that disclosed in the provisional application, the non-provisional application shall form the base application for that part of the claim. Therefore, if amendments are made between a foreign provisional application and a foreign non-provisional application, the foreign non-provisional application should be claimed as the basic application and the relevant certified application documents should be submitted to TIPO at the same time to ensure the applicant’s right of priority.Novelty grace periodAn invention must be kept secret until a patent application is filed. In some countries, such as the United States, a grace period allows an inventor to publish anywhere, make available for public use or put on sale in the United States his or her invention for one year prior to the filing date. The Taiwanese Patent Act is more restrictive, providing only a six-month grace period. In addition, the grace period can be claimed only if:•publication is a result of research or experimentation;China, and vice versa. In order to maintain the benefit of the earliest filing date, it is necessary to file patent applications in both Taiwan and China, especially when an applicant chooses one of these countries as the first filing country for a global patent prosecution.Relationship with PCT countriesMost countries are signatories to the Patent Cooperation Treaty (PCT), including all major industrialised countries. Taiwan, however, is still not a party to the PCT. When filing under the PCT procedure, an applicant may submit a request to enter a specific national phase within 30 months of the international filing date. Since Taiwan is not a PCT country, however, the applicant cannot file an application in Taiwan through PCT procedures and the 30-month grace period does not apply. Some foreign applicants have lost their right to claim priority by mistakenly assuming that Taiwan is a party to the PCT.The Paris Convention states that any filing that is equivalent to a regular national filing under the domestic legislation of a country that is a party to the convention, or under bilateral or multilateral treaties concluded between countries that are party to the convention, shall be recognised as giving rise to the right of priority. As a result, on November 27 2002 the Taiwan Intellectual Property Office (TIPO) announced that an applicant from a WTO member country that files a patent application in Taiwan based on a PCT application may claim a right of priority if the application is allowed provided that the PCT application designates one or more WTO member countries as the designated countries.Although an applicant may file an application in Taiwan claiming a right of priority based on a PCT application if it accords with these criteria, the 30-month grace period does not apply. When filing a PCT application an applicant must file the Taiwanese application within 12 months for an invention patent or utility model application and within six months for a design application.Since Taiwan is not a party to the PCT, a Taiwanese patent application cannot form the basis to claim a right of priority for a PCT application.Relationship with EPC countriesThe guidelines issued by TIPO on November 27 2002 also included European Patent Convention (EPC) applications. An applicant from a WTO member country that files a patent application in Taiwan based on an EPC application may claim a right of priority where that application designates one or more WTO member countries.In addition, even though the recognition of priority rights under the EPC from a first filing in Taiwan isFormosa Transnational Taiwan231Building and enforcing intellectual property value 2008that claims drafted in the following formats are considered to be therapeutic methods:•“a method for treating disease X, using…”; or •“use of substance Y in the treatment of disease X”.Although the Patent Act restricts therapeutic methods, this does not mean that a therapeutic medicine or substance cannot be protected by a patent in Taiwan.If an inventor wants patent protection for a therapeutic invention, he or she can draft a patent application setting out claims in the following manner:•“a composition for treating disease X, comprising…”;•“a method for producing a substance for treating disease X, comprising…”; or •“using substance Y in producing medication for treating disease X”.Patent claims drafted in such a way are not considered to be therapeutic methods and are patentable under the Patent Examination Standards.Limitation contrary to public order, morality or public healthAs the most controversial technology in the biotech field,the patentability of human cloning is one of the hottest discussion topics in the patent field. According to the prohibition clauses, human cloning is considered contrary to public order, morality or public health and related inventions are not regarded as patentable subject matter. As human cloning is a very broad concept and there are some ambiguities, patentable and non-patentable matters can be distinguished. TIPO is drafting guidelines to provide more detailed guidance and to define ‘human cloning’. It is hoped that these guidelines will balance the interests of developing medical science against the public interest.Depositing biological material for patent applications Under Article 30(1) of the Patent Act, when applying for an invention patent involving biological material or the use of biological material, the applicant shall, no later than the filing date:•deposit the biological material at a deposit institute designated by the Patent Authority; and•indicate in the application the name of the deposit institute and the date and serial number of the deposit.This deposit is not required, however, if the biological•publication is a result of the invention being shown at an exhibition sponsored or approved by the government; or•the invention has been disclosed on an occasion not intended by the patent applicant.Similar regulations also apply to designs, but designsdo not involve research and experimentation, and therefore that condition does not apply. Furthermore,these criteria also apply if publication occurs in a foreign country. Many foreign applicants are unaware of Taiwan’s grace period regulations and lose the opportunity to obtain a Taiwan patent.Patent ineligibilityCompared to the United States and some European countries, Taiwan is more conservative in granting patents related to biological material. For example, under Article 24 of the Patent Act, the following items cannot be patented in Taiwan:•animals, plants and essentially biological processes for the production of animals or plants, except processes for producing micro-organisms; •diagnostic, therapeutic or surgical methods for the treatment of humans or animals; and•inventions that are contrary to public order, morality or public health.Limitations on animal, plant and essentially biological processesUnlike some other countries, Taiwan does not provide plant patent protection. It also rejects patent applications regarding animals and essentially biological processes of animals or plants, with the exception of processes for producing micro-organisms. However, this does not mean that biological materials cannot be patented in Taiwan. In fact, if a patent application merely combines natural or biological methods to create a new variety, this is acceptable under the Patent Act. For example, if the breeding method for a new animal or plant variety comprises natural processes such as cross-breeding or selection, it is deemed to be a biological method. A good example is the selective breeding of horses – as it involves only the selection of breeding horses and the confinement of horses with specific characteristics, it is a patentable biological method.Limitations on diagnostic, therapeutic or surgical operation methodsTherapeutic methods are not patentable in Taiwan. The Patent Examination Standards issued by TIPO stipulateTaiwan Formosa Transnational232Building and enforcing intellectual property value 2008CommentThe processes for international patent prosecution develop very quickly. Foreign attorneys practising international patent prosecution need at least a general understanding of some of the peculiarities of Taiwanese practice, as this may influence their application and prosecution strategies in Taiwan. Many further developments have been discussed in recent months and are expected to be implemented in 2008, including:•the establishment of specialist IP courts;•new dispute resolution procedures for IP cases; and •new guidelines for biotechnology and computer software.Taiwanese IP practice is expected to continue to enjoy fast and active development over the coming year.material can be easily obtained by an ordinary person skilled in the relevant field. At present, the Bioresource Collection and Research Centre is the deposit institute appointed by the authority and the only institute authorised by the Taiwanese government for the deposit of patented microbial materials.Since Taiwan is not a signatory to the Budapest Treaty,a patent applicant cannot complete the deposit process for his or her biological material at a deposit institute recognised by the Budapest Treaty when filing a patent application for biological materials.However, in the event that the biological material has been deposited at a foreign deposit institution recognised by TIPO before filing the patent application, there is a three-month grace period to allow the applicant to complete the deposit process in Taiwan if he or she requests this in the application. Within this three-month period the applicant must submit the deposit certificates issued by both the Bioresource Collection and Research Centre and the foreign deposit institution to complete the deposit process for the patent application.。