According to Article 4 III of Regulations Governing Submission of Foreign Language Application Documents, where filing a patent application for design with foreign language documents, such documents shall contain drawing(s) and indicate the title of the design.
After the amended Patent Act was effective on January 01, 2013, some attorneys didn’t pay attention to the detailed amendments on the regulations. They filed patent applications for design with foreign language documents on which the title of the design was not indicated and caused the event that the priority claim was not accepted. Some appeals they filed against the TIPO’s decision have been rejected, such as the appeal decision No. 10206104170 made on July 23, 2013.
Therefore, TIPO especially reminds that the applicant, who files a patent application for design with foreign language documents, should pay attention to the following matters:
- If the title of the design is not indicated in the foreign language documents for filing, the date on which the title of the design is provided shall be regarded as the filing date.
- Application forms, foreign language documents and priority documents are different documents and have their own functions. Where the title of the design is not indicated in the foreign language documents, it cannot comply with the official requirement in this regard since it is not available to be replaced by claiming that the title has been indicated in the application forms and the priority documents.
- Where the title of the design is not indicated in the foreign language documents and the foreign language documents do not contain a specification either, it is not the same situation as parts of the description or drawing(s) are missing from the patent application. Therefore, under such situation, it is not allowed to claim that the missing parts of the description or the drawing(s) are completely contained in the earlier application based on which the priority is claimed, so the filing date shall be the date on which the application was first filed.
- When the date on which the title of the design is provided is regarded as the filing date which results in exceeding the deadline for claiming the priority, the priority claim shall not be accepted.
Source: TIPO News published on November 13, 2013
(http://www.tipo.gov.tw/ct.asp?xItem=494054&ctNode=7127&mp=1)
Delivered by: JAW-HWA INTERNATIONAL PATENT & TRADEMARK & LAWOFFICES
TAIPEI, TAIWAN
http://www.jaw-hwa.com.tw
