| Summary: | 碩士 === 東吳大學 === 法律學系 === 100 === Patent prosecution strategies are generally planned according to different viewpoints on patent invention combination mode, patent application combination mode and patent application timing mode. This article is related to a patent applying strategy applicable for patent priority. Patent priority right is the right given to a patent applicant to file a subsequent application within statutory time in another country or the same country for the same invention effective as of the date of filing the first application and having the same legal effects of the first application, and the patent priority right is divided into international priority right and domestic priority right. Since patent priority right within the statutory time limit has the legal effect to exclude others from filing an application of the same invention later than the first application date, therefore the patent priority right is very important to obtain a patent application right and a patent portfolio.
The system of international priority was first announced by the Paris Convention for the Protection of Industrial Property, and then was adopted by the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) and Patent Cooperation Treaty (PCT), and patent law systems of different countries also have explicit specifications on the regulations of the international priority right. The origin of domestic priority right stems from reconciling disputes on the effect of international priority right and domestic priority patent right, and the domestic priority rights are governed by the patent laws of different countries of the world respectively. In the U.S. Patent Law, the regulations of a continuation application also include the effect of the domestic patent priority, but they are still different from the domestic priority system of other countries of the world.
Since Taiwan is not a member of the Paris Convention or a contracting state of the PCT, Taiwan citizens who file a first application in Taiwan cannot apply the regulations of such international conventions directly. However, after Taiwan has joined the World Trade Organization (WTO) and become a WTO member, Taiwan enjoys the mutual reciprocity of the international priority right of the Paris Convention with other WTO members according to the multilateral agreement of TRIPs under WTO jurisdiction, but the first application filed in Taiwan still cannot be applied directly to the international applications regulated by PCT. In the PCT system, an applicant substantially has the benefit of the international priority right for patent applications in countries which are PCT contracting states after filing a PCT international application that has a grace period of 30 months starting from the filing date of the first application and then filing applications in different countries. The benefits of such international priority with the 30-month grace period are superior to the benefits of the international priority with the 12-month grace period set forth by the Paris Convention. The PCT system provides extreme convenience and advantages to the building of patent portfolios. Based on the international priority claimed by PCT, a self-designation of PCT can be obtained when the designated country of an international application enters into the stage of filing application in such country, and thus there is a competing conflict of the priority rights between the international priority of international applications and the domestic application. With regards to the regulations applicable for the domestic priority, an application based on priority is considered to be revoked when the domestic priority is claimed as set forth in the patent laws of countries including Taiwan in the world. However, the U.S. continuing application with an effect similar to the domestic priority will not be considered as revoked.
This article focuses on the effects of claiming an international priority of the international treaties and the applicability of domestic priority, and explores the patent applying strategy through the study of competing conflicts between international priority and domestic priority for a self-designation of PCT. Particularly, Taiwan is not a contracting state of the PCT, this articles explores and analyzes how to cope with the situations and propose suggestions, attempts to analyze and create a patent portfolio according to a better selection of claiming the international priority or the domestic priority under the regulations of PCT and U.S. continuing applications, and serves as a reference for establishing international patent portfolios in Taiwan
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