Lensar is a manufacturer of innovative medical laser technologies and systems adaptive for ophthalmic procedures such as cataract removal. In Taiwan, Lensar (“the applicant”) filed a patent application on December 31, 2020 claiming priority to a US application filed on January 3, 2020. The priority document accompanying the Taiwanese application was a photocopy (“photocopy”) of a priority application, which was previously filed at the US Patent and Trademark Office (“USPTO”), with a cover page reading “This is to certify that annexed is a true copy from the records of this office of the filed wrapper and contents”.

  Upon receipt of these documents, the TIPO rejected the priority claim on January 13, 2021, on the basis that the paperwork submitted by the applicant was not a lawful priority document in conformity with TIPO’s Patent Examination Guidelines (“PEG”). In particular, the TIPO insisted that an admissible priority document should have borne the verbatim wording “[T]his is to certify that annexed hereto is a true copy from the records of the United States Patent and Trademark Office of those papers of the below identified patent application that met the requirements to be granted a filing date under 35 USC 111 [exhibiting a secured filing date]. The country code and number of your priority application, to be used for filing abroad under the Paris Convention, is US”. The reason for this was, as the TIPO emphasized by citing its own promulgated PEG, that said photocopy was not reviewed and verified by the foreign IP authority to entitle it to a filing date to a extent which would substantiate the document itself as being one received and docketed at the foreign IP authority.

  The applicant sued the TIPO. The main argument was that the TIPO’s source of law which formed the basis of its rejection of the photocopy was merely the Patent Examination Guidelines—the TIPO’s own authoritative regulations. The TIPO’s interpretation of what constituted a priority document unduly narrowed the textual definition for priority documents from the Patent Act. As the applicant stressed, the Patent Act was silent on which paper of a particular formality issued from a foreign patent authority will be considered a lawful priority document serving as admissible evidence to enjoy the benefits of an earlier priority date. Instead, the Patent Act demanded minimally that a submission of “a docketed application certified by a priority-reciprocated country or a WTO member” would suffice. As a part of the administrative body, TIPO has the obligation to rule and be bound by statutory law. The TIPO should not add excessively redundant elements on top of statutory requirements, which would lay on unnecessarily additional burdens on applicants and the general people at large.

  On April 28, 2022, the IPC Court issued a first-instance judgment to dismiss Lensar’s complaint on the grounds that the TIPO’s decision of rejection was correct.[1] Lensar appealed the case to the Supreme Administrative Court (“SAC”) for the second instance review. On May 25, 2023, the SAC affirmed the lower court’s decision.[2]

  In the opinion of the SAC, the formality requirements of a priority document stipulated by the TIPO do not exceed the meaning of statutory law. The Patent Act enacted by the legislative body authorizes the government agency (here the TIPO) to plan and formulate corresponding Implementation Rules for carrying out specific measures including, among others, the form of a priority document. In the Implementation Rules, a priority document must be an original copy in paper or electronic form. They are essentially only procedural and supportive guidelines; they do not exceed policy mandates or the textual boundaries of statutory law.

  A priority document is a legal instrument for authenticating the “institution of an earlier filing” in order to decide whether the benefit of priority is applicable. Such a document should contain sufficient information to allow the TIPO to determine whether the earlier application was filed in a WTO member or reciprocal state, whether the Taiwanese application was filed within 12 months of the earlier filing date, and whether the Taiwanese and the earlier applications claim the same invention. Therefore, a qualifying priority document should bear both the filing date of the earlier application and the application number, and should include a copy of content equivalent to the earlier filed application for review by the TIPO. Furthermore, the priority document provisions in the Patent Act were drafted with reference to the Paris Convention, which requires priority documents to be issued by the patent authorities of member states. Taiwan must abide by the Paris Convention, which states that a photocopy in substitute of the original copy is invalid.

  The PEG provides that a lawfully admissible priority document is one issued by a WTO member’s patent authority after said earlier filing has been docketed. It should include a cover page bearing details such as the name of the office in full, an embossed seal, the title of the invention and the filing date; it should also include a patent specification, drawings and other basic information, and all pages must be bound together like book. Conversely, electronic application receipts, notices of acceptance or allowance, patent certificates themselves, patent gazette clippings, and full-volume photocopies of applications are not acceptable. The PEG do not add excessive restrictive requirements and are in line with the legislative policies of the Patent Act, the SAC opined.

  In the present case, the photocopy submitted by the applicant did not bear an official filing date to demonstrate acceptance by the USPTO or any text specifying priority. It was not a lawful priority document capable of establishing priority right. The lower court’s finding was not erroneous; therefore, its judgment was affirmed.

  This was not the first case in which the SAC found in leaned towards the TIPO on the issue of the formality requirements of a priority document.[3] The TIPO is the specific authority responsible for IP administration, including patents. Supportive administrative measures such as documentation procedures are subject to only low-intensity judicial review. In the pursuit of correct and professional identification of whether the particular requirements are met, the court conceded to the TIPO’s rules and decision.

  In the Patent Examination Guidelines, the TIPO provides a number of examples of cases where priority claims were rejected due to incorrectly filed documentation.

  Example 1 – A photocopy of the entire file wrapper (USPTO).

  Example 2 – A filing receipt with a photocopy of the specification (USPTO).

  Example 3 – A filing receipt with a photocopy of the specification (Design under the Hague Agreement).

  Example 4 - A certificate of registration for design (EUIPO).

  On a separate note, Taiwan is currently engaged in bilateral electronic priority exchange (PDX) programs with Japan and Korea. Both the Taiwan-Japan and Taiwan-Korea PDX programs are available for all types of patents, be they inventions, utility models or designs. In order to take avail of the PDX in Taiwan, a first filing applicant in Japan needs to obtain an access code from the JPO and then provide the same in addition to the application number, filing date, and the type of patent filed in Japan. As for a first filing in Korea, the applicant only needs to specify the application number and filing date in order to claim priority in Taiwan.

  On a final note, the Digital Access Service (DAS) code administered by the WIPO is not accepted in Taiwan.

Please contact info@tsailee.com for any inquiries.