國內優先權 / 專利工程師林孟萱
Domestic Priority right /Patent Engineer Meng-Xuan Lin
In order to guarantee its applicant to enjoy priority right domestically and internationally, Patent Law amended its domestic priority right system after 2001. The purpose for such domestic priority right is that an applicant lodged its invention application or utility model application as a base (prior patent application), to where you can lodge other applications within twelve (12) months period (later patent application), the priority date claimed at the prior patent application would be used as the reference date during the patentability examination.
2. Domestic Priority Right
Patent Law Article 28 sets out its specification of relevant provisions for domestic priority right. Such domestic priority right would only be used for invention application or utility model application. In between its invention application and utility model patent, he/she may claim for such priority right in respect of the invention or creation described in the specification or drawings submitted along with his/her prior patent application; however such principle does not apply to a design patent as such. For people who claims for its domestic priority right shall be the same applicant for its prior patent application and later patent application, same rules apply to more than two applicants that need to be the same.
For people who seek for domestic priority right, they can do so by adding up its application and to add more details on its technical contents, for which has not been previously disclosed in the prior patent application so as to expend its coverage for patent protection. Through domestic priority claim, we can determine whether such application satisfied its patent application requirement in terms of its novelty, progressive or prior patent application’s application elements. Where an applicant files a further application based on a prior invention application or utility model application, he/she may claim for the priority right in respect of the invention or creation along with his/her prior patent application within twelve (12) months from the filing date of the prior patent application. For a patent application claiming for its priority, the priority date shall be used as a reference date during the patentability examination.
However you cannot accumulate its domestic priority claim especially for its application which has been used for its domestic or international priority claim nor to use the later patent application for its prior patent application. For its divisional application, you cannot use this as another case to claim for its domestic priority right; however exception applies if such division coexists with the prior patent application. However if such prior patent application is published and it was determined not to grant such patent, be withdrawn, or if such application is rejected on procedural grounds or on the ground of the ineligibility of the applicant, such prior patent application cannot be used as domestic priority right application.
-where claiming for such priority is made and the examination decision has been made in respect of the prior patent application, such application shall be deemed to be withdrawn after 15 months from its filing date to avoid repetitive disclosure and examination. Even the later application claim for its priority right for its prior application, such application shall be deemed to be withdrawn. If you wish to preserve the part that has not claim for its domestic priority right for its prior patent application, prior to such priority claim, you would need to lodge a divisional application to do so.
Step by Step interpretation of Patent Law
Patent Examination Guidelines
Intellectual Property Office <https://www.tipo.gov.tw/mp.asp?mp=1>