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By Werner Chiu, NAIP Patent Research & Jeffrey Chang, NAIP Editorial

Since ECFA and the cross-strait IPR agreement were signed in September, many have wondered when the goals and frameworks established would become reality. But since many political, administrative and even logistical issues had yet to discussed, many were surprised when only two short months later on 11 November 2010, when China's State Intellectual Property Office of China (SIPO) and Taiwan's Intellectual Property Office (TIPO) announced the implementation of mutual priority rights recognition for patents and trademarks.


The announcement formally went into effect on 22 November 2010 and applicants may now file invention, utility model or design patents and trademarks at SIPO, claiming priority from a TIPO application, and vice versa. Priority can be claimed from applications filed on or after September 12th, the date the IPR agreement was signed.

Previous Regulations
Prior to the announcement, neither TIPO nor SIPO accepted applications claiming priority from the other office. TIPO regulations were:

If the applicant is a national of the People's Republic of China, no matter which country the claimed application is filed in, priority claims not be processed.

If the claimed application is an application at SIPO, no matter the nationality of the application, priority claims will not be processed. The only exception would be if the application is a PCT application that originated from China.

These two regulations have now been cancelled.

SIPO's regulations were similar. If a claimed application was a TIPO application, no matter the nationality of the applicant, the priority claim would be rejected. The regulation was amended on 19 November 2010 to allow Taiwan applications, albeit with limitations in application procedure and format.

Dates & Time Limits
Applications filed at TIPO and SIPO on or after 22 November 2010 are eligible to claim priority on applications filed on or after 12 September 2010.

Time limits for priority claims are the same as those set in the Paris Convention: twelve months for patents and utility models, and six months for industrial designs and trademarks.

Deadlines to submit relevant documents (i.e. copies of application): 3 months for SIPO applications; 4 months for TIPO

Fees
Priority Claim Fee: SIPO – 80RMB fee. Failure to submit the complete amount will be construed as no claim

TIPO – No additional fee

Special Regulations
In addition to some procedural and regulatory differences, due to the complex political situation, SIPO has specifically introduced rules with regards to applications.

Assignment of Priority Rights
SIPO – A single or multiple priority claims can be relinquished. However, all applicants must consent via a signed or stamped statement.

Restoration of Lost Priority Claims
SIPO – Lost priority claims may be recovered if: 1) Loss was due to failure to submit requested materials within specified time limit. 2) At least one item is filled correctly in the declaration claiming priority, however a copy of the TIPO application, evidence of transfer of priority claims rights or relevant statement have not been provided within the prescribed time limit. 3) At least one item is filled correctly in the declaration claiming priority, however, the fee was not paid or not paid in full within the prescribed time limit. 4) A divisional application's original application has claimed priority of a TIPO application.

Conflicting Phrases/Words
SIPO - If any phrases, words deemed contrary to any laws or regulations (i.e. Republic of China, the Country of Taiwan, etc….) appear in the application, SIPO will request the applicant make amendments. If satisfactory amendments are not made within 2 months, the application will be rejected! If the phrases are deemed not relevant to the technical aspects of the application, SIPO may delete words of phrases of its own accord and is not required to notify the applicant.

Non-disclosure of Address
SIPO - An applicant may choose to not publicly disclose his address and instead list "China, Taiwan".

Benefits & Conclusion
Implementation of mutual priority rights now provides applicants with more time and leeway in deciding when to file and can reduce risk of rejection. Previously, when filing for applications at SIPO and TIPO, an applicant would have to apply to both offices simultaneously to ensure an application would not be rejected due to prior art claims. However this involved the risk that the applicant would be in contravention of China Patent Law Article 20 regarding confidentiality examinations. These issues existed in addition to increased costs.

After implementation, applicants can now first file in China and request a confidentiality examination, and then after approval of confidentiality examination, file in Taiwan claiming priority of the SIPO application.

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