PCT-Taiwan

Taiwan is not a member of PCT. In the past, an applicant of a foreign country could claim priority in Taiwan only if reciprocal recognition of priority claim was established between his home country and Taiwan. That is, if the home country of the foreign applicant had signed a treaty or an agreement with Taiwan to allow Taiwanese nationals to claim priority in that foreign country, the applicant could claim priority for a patent application in Taiwan too.

Anyway, Taiwan joined the World Trade Organization on Januray1, 2002. To bring it in line with the TRIPS Agreement, Taiwan amended the Patent Act. Starting from January 1, 2002, a national of a member country of WTO is eligible to claim priority in Taiwan based on a patent or trademark application filed in any WTO member country. Now, it is allowed for the foreign applicant to claim priority based on a PCT application, EPC application or an application filed in any member country of WTO.

For an invention or utility model application filed in Taiwan, the grace period for claiming priority is 12 months from the earliest patent application, while for a design application, the grace period for claiming priority is 6 months from the earliest patent application.

According to the Patent Convention Treaty, the time limit for entering the national/regional phase is 30 months from the priority date. Moreover, in some countries, e.g. China, the Patent Law provides remedy for PCT application entering national phase even though the time limit is due. To revive the validity of patent claiming priority, the applicant has to state that he unintentionally delays the filing of the application and pays petition fee within two months after the 30 month time limit.

However, the 30 month time limit does not apply to Taiwan. Once the 12 month is due, no one is entitled to claim priority. Also, the Taiwanese Patent Act does not provide any remedy for reviving the validity of patent claiming priority. Worse still, since the PCT application is published after 18 months from filing date, the novelty of the PCT application is lost. Taiwan adopts absolute novelty. According to Article 22 of Patent Act, an invention shall not be published, put to public use, or known to the public. For a patent application corresponding to the PCT application filed after it is published, it shall be rejected.

Most of the attorneys and foreign clients mistakenly believe that Taiwan is a PCT member state, and request us to file a patent application in Taiwan based on the PCT international application before the 30 month time limit. Unfortunately, it is too late to file. Therefore, to reserve the validity for claiming priority and novelty of a patent application, we advise the applicant to file the patent application in Taiwan before the grace period.