The current patent system in Taiwan does not have the provisional applications such as those in United States or Australia. Under the prevailing Patent Act in Taiwan, the applicant must file an application with specification, claims, abstract and any necessary drawings in order to obtain an effective filing date of a patent application. However some applicants felt that the drafting of a full description of patent specification with claims, etc. as required by TIPO will delay the timing for them to obtain an earlier filing date and may not be cost-effective in terms of a highly competitive market. Therefore Taiwan Intellectual Property Office (TIPO) previously conducted a study on the feasibility of introducing provisional applications into the current patent system in Taiwan. Following a public hearing held in May 2015 to include this issue and other topics, TIPO has recently announced a feasibility study report on the assessment of filing provisional patent applications in Taiwan and invites the public to provide any relevant comments.
In said report, TIPO first explains briefly the current provisional application systems in the United States and Australia, followed by stating that Japan has conducted similar discussion on this issue but not yet decided to accept the filing of provisional applications, and Korea has relaxed the filing format of a patent application similar to those of US provisional application by accepting a thesis or publication for obtaining an earlier filing date but the applicant is still required to supplement a full copy of specification with claims. TIPO then recites the current domestic priority system in Taiwan which is similar to the provisional application system to allow the applicant to secure an earlier filing date of his first filed application, albeit the difference existed in format requirements of disclosure of invention. TIPO has further analyzed the mechanism of filing domestic provisional applications from various points of view including the actual demand, the effects on the applicant and patent agent, as well as on the patent filings and examination process in Taiwan, and thus summarized the following points which need further deliberate consideration:
- If a domestic provisional application is implemented, it may not change the patent filing strategy of domestic applicant due to the main reason that the current official fee for filing a patent application in Taiwan has already been deemed lower than those of other countries and thus it may not be cost-effective to file a provisional application.
- Given that Taiwan is a member of WTO, all the members should recognize the priority claim from each other, yet in practice it is still unknown if the priority of a domestic provisional application in Taiwan will be recognized by WTO member or any other countries which have established mutual recognition on priority claim with Taiwan.
- There is no country which adopts both provisional application and domestic priority systems at the same time. The provisional application system will be confused with the current domestic priority system in Taiwan and may make the filing and examination process more complicated.
- According to the statistics on the percentage for Taiwanese applicants who filed US regular applications within the 12-month period after filing provisional applications, it is only around 4% for Taiwanese applicants who claimed the priority of US provisional application when filing a patent application in Taiwan, which mostly from the optoelectronic field. Therefore if the applicant files only domestic provisional applications in Taiwan to claim its priority for filing the same invention in foreign countries, yet without filing the regular applications in Taiwan, then the number of patent filings in Taiwan may be decreased.
- Provisional application may increase the complexity and difficulty on the substantive examination process of the later-filed regular application, especially if any request is filed on correcting the translation errors, and such will lengthen the examination period.
TIPO’s report finally concluded that it is still unfavorable for Taiwan to adopt provisional application system under current patent system and environments.
Despite the above, it is to be noted that a foreign applicant can file a Taiwanese patent application with a full copy of specification, claims, etc. to claim the priority of a provisional application which is first-filed in US or Australia (or to claim both provisional and regular applications if new matter has been added into the regular application).
In addition, if the applicant has first filed a patent application in Taiwan, he can claim domestic priority for his later-filed application, so that said first-filed application will be deemed as withdrawn after 15 months from its filing date. However, unlike the provisional application which amendments is not allowed to be made and is only an interim application existed for 12 months regardless whether a regular application is filed or not, the applicant can file amendments without any substantial change for a first-filed application under the domestic priority system in Taiwan which could still continue its examination if the applicant has withdrawn the domestic priority claim of his later-filed application within the 15-month period from the filing of said first-filed application. Therefore TIPO deems that the current domestic priority claim system in Taiwan already provides more merits for most applicants as compared with provisional application system.
