According to Paragraph 1 of Article 30 of the Patent Act, where an applicant, based on his/her earlier invention or utility model patent application in the ROC, files a subsequent patent application, he/she may make a priority claim with respect to the invention or utility model disclosed in the description, claim(s) or drawing(s) submitted for the earlier patent application. However, this provision shall not apply where the earlier patent application is for a utility model patent application that has been published or has been irrevocably rejected; or where the earlier patent application has been withdrawn or dismissed. (Item (5) & (6) of Paragraph 1 of Article 30)
In the case of No.102, year of 2013, an administrative decision made by the IP Court, the Plaintiff filed a Utility Model patent application on January 04, 2013 claiming priority based on an earlier Utility Model patent application filed on February 29, 2012 in Taiwan. After the formality examination, the earlier Utility Model patent application received the written decision of allowance from TIPO on June 13, 2013. Thus, the official deadline for the Plaintiff to pay the issue fee and the first year patent annuity was due on September 13, 2013 (within three months after the service of the aforesaid written decision) but the Plaintiff failed to conduct the payments on time.
According to Paragraph 1 of Article 101 of the Patent Act effective at the moment when the earlier Utility Model patent application received the aforesaid written decision, a claimed utility model in a patent application will not be published until the applicant shall have paid the issue fee and the first year annuity within three (3) months after the applicant has received the written decision for grant of the patent as requested; if the applicant fails to make the foregoing payments upon expiry of the given deadline, no publication of said utility model will be made, and the patent right granted thereof shall not exist ab initio.
The Plaintiff failed to pay the issue fee and the first year annuity before the expiry of official deadline, i.e. September 13, 2013, so no publication of said utility model was made, and the patent right granted thereof deemed to be non-existent from the beginning. That is just the situation as stipulated in Item (5), Paragraph 1 of Article 30 of the current Patent Act that the earlier Utility Model patent application cannot be the base application for priority claimed by a subsequent Utility Model patent application if it has been irrevocably rejected. Therefore, the Plaintiff should not make a priority claim based on the earlier Utility Model patent application for their subsequent patent application.
Source: TIPO Newsletter published on May 5, 2014
(http://www.tipo.gov.tw/public/epaper/113/ePaper113_ep8108.htm)
Delivered by: JAW-HWA INTERNATIONAL PATENT & TRADEMARK & LAWOFFICES
TAIPEI, TAIWAN
http://www.jaw-hwa.com.tw
