The applicant must submit a certified copy of the patent application granted by a nation or WTO member where the patent application was submitted within 16 months of the earliest priority date, according to paragraph 2 of Article 2 of the Patent Act. To simplify and streamline the process, Paragraph 1 of Article 22 of the Enforcement Rules of the Patent Act further provides that the priority document shall be deemed to have been submitted by the applicant if it has been electronically transmitted between the Specific Patent Agency and the receiving patent authority of the country or the WTO member. The aforementioned rules also apply to utility models and design patents, and a design patent application has a 10-month deadline for filing the certified priority document.
The Taiwan Ministry of Economic Affairs published “Operational Directions on Electronic Exchange of Patent Priority Documents between the Taiwan Intellectual Property Office and Korean Intellectual Property Office” (hereafter referred to as the Directions) on December 25, 2015. Although the Directions permit the electronic exchange of priority papers between the Taiwan Intellectual Property Office and the Korean Intellectual Property Office, under Paragraph 2 of Article 2 of the Directions, design patents are not covered by this provision. As a result, in order to effectively assert priority, an applicant who files for a design patent in Taiwan or Korea must provide a copy of the priority paperwork.
Taiwan and Korea agreed to the “MOU on Electronic Exchange of Priority Documents for Design Patent Applications” in 2021, bringing design patent applications within the electronic sharing of patent priority documents. The Direction to repeal Paragraph 2 of Article 2 was also modified by the Ministry of Economic Affairs in Taiwan based on the MOU so that it now explicitly covers all forms of patent applications.
On July 1, 2023, the Directions underwent a change. In order to complete the process of claiming priority, applicants must submit the access code needed for electronic exchange within 10 months of the earliest priority date and file a design patent in Taiwan based on the priority date of a Korean application within 6 months of the date the first design patent application was filed in Korea. The priority document will be requested from the Korean Intellectual Property Office by the Taiwan Intellectual Property Office.
Japan, Korea, and Taiwan are working together as of July 2023 on the Electronic Priority Document Exchange Program for invention patents, utility models, and design patents. When a foreign priority is claimed, applicants may benefit from the Electronic Priority Document Exchange Program to streamline the application procedure.
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