In Taiwan, an applicant can file a patent application within a grace period of disclosure under certain conditions which would not be considered as prior art when examining the novelty or inventive step requirements. The government has now relaxed these conditions and requirements for applicant to better enjoy the grace period benefits. The newly revised Taiwan Patent Act and Patent Rule are set to be implemented on May 1, 2017. The operation for filing a Taiwan patent application within the grace period of disclosure are provided as follows:
Term of Grace period
The applicant must file the invention or utility model patent application within 12 months (6 months for design patent application), i.e. calculating from the next day after the earliest date of disclosure to the filing date of Taiwan patent application. A foreign applicant can file a patent application within this grace period to claim also the priority of his foreign basic application but the starting date for calculation of priority claiming period (12 months for invention or utility model application, or 6 months for design application) should be separated from such grace period; also, it is to be noted that the starting date for calculation of foreign priority date shall not be retrospective to the earlier date of disclosure for a patent application of which its invention has been displayed in an international exhibitions (i.e. Article 11 of Paris Convention is not applicable in Taiwan).
Disclosure Manner of Grace Period
There is no limitation on the disclosure manner so that the disclosure could be any form such as experiment or test, printed article or publication, exhibition or any commercial practice (manufacturing, use, offer for sale, sale, import), and whether or not it is intentionally made by the applicant. The only exception is the disclosure of official patent gazette. Namely, the grace period of disclosure does not apply to the invention or creation of which its patent application was filed and then published in a domestic or foreign patent gazette.
Claim of Grace Period
It is no longer required to declare or make a claim on the grace period of disclosure at the same time when the applicant files a patent application for invention, utility model or design. However, during the substantive examination stage (for invention and design application, whereas formality examination is conducted on utility model application), if the Examiner has found the earlier disclosure of a patent application which the applicant did not reveal said disclosure when filing a patent application, a letter of examination opinion may be issued for the applicant to make a response. Therefore, in order to expedite the examination process, the applicant is preferably to claim the grace period of disclosure when filing a patent application by stating voluntarily the cause and date of occurrence and submitting an evidencing document of said disclosure.
The above newly revised requirements for grace period of disclosure are applicable to Taiwan patent applications filed on or after May 1, 2017. The applicant should therefore take this advantage to seek patent protection in Taiwan for his invention or creation despite the earlier disclosure within the one year grace period before filing an invention and/or a utility model application.
