With increased trade and closer relations between Taiwan, Republic of China ("Taiwan") and the People's Republic of China ("China" or "mainland China"), patent applicants in Taiwan, as of November 22, 2010, can now claim priority to an earlier-filed Chinese patent application and vice versa. (However, only Taiwanese applicants, including Taiwan subsidiaries of multinationals can claim priority in China from a Taiwan application.) Claiming priority enables a later-filed application to be treated as if it was filed on the same date as the earlier application. For example, a U.S. multinational with a Chinese research division that first filed an application in China can now file the same application in Taiwan and claim priority to the earlier Chinese 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 both 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. However, like filing in a third jurisdiction, this adds unnecessary costs if not interested in international patent protection.
This change in law occurred alongside the "Cross-Strait Economic Cooperation Framework Agreement" and the "Cross-Strait Intellectual Property Rights Protection Cooperation Agreement" (the "Agreements"), which were signed on June 29, 2010 during the fifth meeting between the Taiwan's Straits Exchange Foundation and China's Association for Relations across the Taiwan Straits, and which came into effect on September 12, 2010. Both Taiwan and China have started to receive patent applications and recognize priority claims. However, the right to claim priority is not retroactive and only applies to first filings made on or after September 12, 2010.
To claim priority in China to a Taiwanese patent application, the applicant should (1) within the priority period (6 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 3 months from the filing date of the subsequent application; and (4) pay the fee for claiming priority when paying the filing fee.
To claim priority in Taiwan to a Chinese patent application, the applicant may (1) within the priority period (6 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 3 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. Taiwan does not have a similar requirement.
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.
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