眾律國際法律事務所/眾律國際專利商標事務所

眾律國際法律事務所 專利工程師暨法務專員林春宏

美國柏克萊加州大學 分子生物學士

美國柏克萊加州大學 資訊管理 碩士

加拿大英屬哥倫比亞大學 法律博士

2012-12-12

World Intellectual Property Organization (WIPO) and Patent Cooperation Treaty (PCT)

Patent Cooperation Treaty (PCT) is an international patent law treaty, administered by the World Intellectual Property Organization (WIPO), that provides a unified procedure for filing patent applications.   PCT applications are recognized by the contracting states of the Patent Cooperation Treaty. However, Taiwan is not a contracting state, although Taiwan will accept a priority claim based on an application under the PCT or EPC (European Patent Convention) filed by a citizen of a WTO member state.

The Patent Cooperation Treaty (PCT) consists of two phases: (1) international phase and (2) national phase (or regional phase). During the first phase, an international PCT application is filed with a Receiving Office (RO) in one language.   A patent search will be performed by an International Searching Authority (ISA), accompanied by a written opinion regarding the patentability of the invention. The applicant will also have the option of requesting a preliminary examination, performed by an International Preliminary Examining Authority (IPEA). After filing the international application, an applicant will usually have 30 months to enter the national (or regional) phase, with some exceptions. However, Taiwan is not a contracting state of the Patent Cooperation Treaty, so Taiwan does not recognize the 30-month grace period. A citizen of a WTO member state may claim priority by filing a patent application with the Taiwan Intellectual Property Office within 12 months of filing the PCT international application.

During the national or regional phase, PCT patent applications will be examined by the national patent office or the regional patent office (such as the European Patent Office) designated by the applicant. The granting of patents will be based on the patentability rules of each nation. Therefore, allowance of patent claims by one national patent office does not necessarily mean that another national patent office will also allow the patent claims. Each national patent office will make autonomous decisions regarding the granting of patents.

References:

Taiwan: Intellectual Property Rights Arrangements - International Aspects

http://www.ipo.gov.uk/pro-policy/policy-information/policy-notices/policy-notices-old/policy-notices-taiwan/policy-notices-taiwaninter.htm

Patent Cooperation Treaty (PCT)

http://www.wipo.int/pct/en/texts/articles/atoc.htm

眾律國際法律事務所 專利工程師暨法務專員林春宏

美國柏克萊加州大學 分子生物學士

美國柏克萊加州大學 資訊管理 碩士

加拿大英屬哥倫比亞大學 法律博士

2012-12-11

World Trade Organization (WTO) : Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS)

The World Trade Organization (WTO) administers the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), which is an international agreement that sets the standards for intellectual property protection among WTO members. Taiwan (Chinese Taipei) became a member of the World Trade Organization on January 1, 2002. WTO members must ensure that their national laws satisfy the requirements specified by the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), including the protection and enforcement of copyright, trademarks, patents, industrial designs, geographical indications, etc.

According to PART II “Standards Concerning the Availability, Scope and Use of Intellectual Property Rights” of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), WTO members must meet the following standards of protection. For example, Article 12 regarding copyright stipulates: “Whenever the term of protection of a work, other than a photographic work or a work of applied art, is calculated on a basis other than the life of a natural person, such term shall be no less than 50 years from the end of the calendar year of authorized publication, or, failing such authorized publication within 50 years from the making of the work...”

In addition, Article 33 sets the term of protection for patents at a minimum of 20 years from the filing date. Article 28 requires that “A patent shall confer on its owner the following exclusive rights: (a) where the subject matter of a patent is a product, to prevent third parties not having the owner's consent from the acts of: making, using, offering for sale, selling, or importing... that product; (b) where the subject matter of a patent is a process, to prevent third parties not having the owner's consent from the act of using the process, and from the acts of: using, offering for sale, selling, or importing... the product obtained directly by that process.” Article 26 specifies that the duration of protection for industrial design must be at least 10 years.

References:

World Trade Organization (WTO)

http://www.wto.org/english/thewto_e/countries_e/chinese_taipei_e.htm

Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS)

http://www.wto.org/english/tratop_e/trips_e/t_agm3_e.htm