Press Enter to Center block
:::

Intellectual Property and Commercial Court

:::

2011 Xing Zhuan Su Zi No. 30

font-size:
Decision No. 2011 Xing Zhuan Su Zi No. 30
Date August 25, 2011
Decision Highlight

1. Article 25, Paragraphs 1, 3 and 4 provide the prescribed formality of filing an invention patent, where when the application form, specification, and necessary drawings are ready, that day is the filing date. Article 27, Paragraph 1 provides the requirements for claiming a right of priority and the prescribed duration. Article 28 provides the prescribed formality of declaring a right of priority and the deadline of document submission. Plaintiff who filed a patent application and claimed a right of priority should have met those above-mentioned provisions so as to acquire a filing date according to Article 25, Paragraph 3. As for Article 27, Paragraph 1, although only “filing” is mentioned, it should be interpreted as filing which meets the prescribed formality so as to acquire a filing date according to Article 25, Paragraph 3. Therefore, according to what is provided in Article 25, Paragraph 1, 3 and 4, and Article 27, Paragraph 1, Plaintiff who wants to file an invention patent application and claims a right of priority should, within the twelve months since the first patent filing, prepares the application form, specification, and necessary drawings to file to Defendant, where when the application form, specification (including the Chinese version and foreign language version), and necessary drawings are ready, that day is the filing date. Article 28 of the Patent Act provides the situations of the loss of a right of priority, but does not provide that when “a patent applicant acquires a legitimate filing date after twelve months since the filing date of the first patent application,” she also loses a right of priority in this situation. But, statutory interpretation should generally consider the whole provisions of the law. Article 25, Paragraph 1 of the same Act provides, “Regarding an invention patent application, a patent applicant files it to the patent agency by preparing the application form, specification and necessary drawings.” Article 27, Paragraph 1 provides, “An applicant … may claim a right of priority.” Without fulfilling that requirement, a right of priority cannot be claimed, of course. And, Article 28, Paragraph 1 consequently provides that “one who follows the preceding provision to claim a right of priority, ....” Plaintiff should comply fully with all provisions regarding patent application so as, then, to claim a right of priority. As described above, Plaintiff supplemented the documents, such as the Chinese-version patent specification, power of attorney and title transfer note, late on September 20, 2010. All application documents were prepared on that day which is beyond the period vested in Article 27, Paragraph 1 for claiming a right of priority, so for the application at issue a right of priority cannot be claimed. Plaintiff only looks into the provisions of Articles 27 and 28, but ignores that Article 25 requires that application documents should be prepared and that the rules of filing date are vested in Article 25. So, Plaintiff’s view is baseless.

2. Article 11, Paragraph 1 of the Implementing Rules of the Patent Act satisfies the doctrine of certainty of authorization:

(1) The restrictions that a state imposes on people’s freedom and rights shall be provided by law and shall not go beyond a degree of necessity. That is vested clearly in Article 23 of the Constitution. But, the content of a law cannot be so detailed to include every matter. For matters of details and technicality, a law can grant to an agency to issue an order to regulate these matters in order to enforce the law. Based on that authorization, an agency issues implementing rules, or orders, which fulfill the legislative intent and do not go beyond the limit vested in the mother law. That should be allowed by the Constitution. This purpose has been interpreted by the Judicial Yuan on record. However, in cases where the mother law grants general authorization, determining whether implementing rules, or orders, issued by an agency go beyond the authorization of the law should not depend on the words of provisions but should refer to the legislative intent of the law itself and consider relevant meanings of provisions as a whole to make a determination. (See the interpretation opinion of the Judicial Yuan Interpretation No. 480 and the interpretation opinion of the Interpretation No. 612.).

(2) Article 27, Paragraph 1 of the Patent Act provides that an applicant “may claim a right of priority if she files a patent application in Zhong Hua Min Guo within twelve months since the filing date of the first patent application.” The statute uses the terms “the filing date of the first patent application,” “twelve months,” and “files a patent application in Zhong Hua Min Guo.” So, within the twelve months period during which an applicant may claim a right of priority, the deadline is the date on which she files a patent application in this country. The Implementing Rules of the Patent Act were made and promulgated by the authority, Minister of Economy, which is authorized by Article 137 of the Patent Act. Article 27, Paragraph 1 of the same Act provides a starting date of the period during which a right of priority may be claimed. Article 11, Paragraph 1 of the Implementing Rules of the Patent Act provides that “calculated from the next day of the filing date of the first application to the filing date defined in Article 25, Paragraph 3 of this Act.” Based on the rules of filing date vested in Article 25, Paragraph 3 of the Patent Act as general consideration and “filing” as described in Article 27, Paragraph 1 of the same Act in terms of interpretation, a starting date of a period during which an applicant may claim a right of priority and the calculation of the period mean that when filing meets the prescribed formality, a filing date can be granted under Article 25, Paragraph 3. Considering a general legal principle that a starting day of a period is not counted in the calculation of the period (for instance, Article 120, Paragraph 2 of the Civil Code and Article 4.A.(3) of the Paris Convention (Article 4, Section A(3)) providing, “(3) By a regular national filing is meant any filing that is adequate to establish the date on which the application was filed in the country concerned, whatever may be the subsequent fate of the application” [“he fa guo nei shen qing cheng xu,” xi zhi zu yi que ding zai you guan guo jia nei suo wei shen qing zhi ri qi zhe, er bu lun gai xiang shen qing si hou zhi jie guo.], it is found that the rules in Article 11, Paragraph 1 of the Implementing Rules of the Patent Act related to the prescribed period of claiming a right of priority are of matters of details and technicality. They satisfy the legislative intent and, based on the relevant meanings in those provisions as a whole, do not go beyond the limit vested in the mother law. Therefore, the doctrine of certainty of authorization is met.

Keywords

Meaning of “application”

Relevant statutes Article 25, Paragraphs 1, 3 & 4, Article 27, Paragraph 1, & Article 28 of the Patent Act; Article 11, Paragraph 1 of the Implementing Rules of the Patent Act
  • Release Date:2020-11-13
  • Update:2020-12-07
Top