Successful reinstatement of priority date
For example, Saturday February 6, 2010 was made a working day in order to accommodate the 2010 Lunar New Year holidays, which ran from Saturday February 13 to Sunday February 21.
The applicant in question, a US company, sent its instruction to file an invention application on Sunday February 7, claiming priority to February 6, 2009, because it believed that Monday February 8, 2010 was the due date according to the conventional practice. The application was filed with priority claims on Monday February 8, 2010; however, the Taiwan Intellectual Property Office (TIPO) declined to acknowledge one of the priority claims because its deadline of February 6, 2010 had lapsed.
TIPO’s decision was appealed to the Board of Appeal, with a request to reinstate the priority date on the basis that “the delay [was] caused by other causes not attributable to applicant”, under Article 17 (2) of the Patent Act.
The claim is based on the fact that Saturdays are normally non-working days for government agencies in Taiwan; that the applicant is a foreign entity that would not have reason to be aware of an adjusted working Saturday; and that the local patent attorney is not at fault for failing to meet the priority deadline because the filing instructions were not received until the morning of Sunday February 7, 2010.
“It is worth noting that the State Intellectual Property Office in China explicitly stipulates to postpone the due date of a statutory period that falls on an adjusted working weekend to the first working day after the weekend. Foreign applicants should therefore be wary of the difference between China’s and Taiwan’s practice in this area.”
Pursuant to Article 48(4) of the Administrative Procedure Act, “[i]f the last day of a period falls on Sunday, national holiday or any other holiday, the day following that day shall take its place, and if the last day of a period falls on Saturday, its last day shall be the Monday morning of the following week”. Whether it is a national holiday or an otherwise non-working day shall be determined by government agencies. Should a specific Saturday be adjusted to a working day, government agencies are open as per usual. Given that a party may still contact the competent government agency on that day,
Article 48(4) of the Administrative Procedure Act does not apply, and therefore the last day of any statutory deadline falling on a working Saturday shall not be extended to the following Monday.
Such interpretation of the law is based on the main points of the Supreme Administrative Court judgment in December 2009 and a Letter of Interpretation from the Ministry of Justice released in February 2010. Accordingly, TIPO in this case believed that either the applicant or its patent attorney should be responsible for the lapse of the priority date.
The Board of Appeal concurred with TIPO’s opinion that Article 48(4) of the Administrative Procedure Act does not apply in this case. However, it opined that Taiwan adopts the solar calendar and, like most countries in the world, it sets Saturdays as non-working weekends for government services.
In this case, although the Executive Yuan had announced and published the adjustment early in August 2009 through its website and various local media, foreign entities residing outside of Taiwan may have lacked the means to know about the change. The Board of Appeal urged TIPO to investigate whether the announcement was available in the applicant’s home country or locality, so as to determine whether the applicant should have acted on the opportunity to access such information.
Since TIPO could not provide proof of this, the priority date of the original claim was reinstated on November 26, 2010 in TIPO’s new decision after remand. As the decision is contrary to the interpretation of Taiwan’s Ministry of Justice, it is still not clear whether it may be applied to other cases under similar circumstances.
It is worth noting that the State Intellectual Property Office in China explicitly stipulates to postpone the due date of a statutory period that falls on an adjusted working weekend to the first working day after the weekend. Foreign applicants should therefore be wary of the difference between China’s and Taiwan’s practice in this area.
Candy K.Y. Chen is a patent attorney and managing partner at Tsai Lee & Chen. She can be contacted at: ckchen@tsailee.com.tw
Crystal J. Chen is a lawyer and partner at Tsai Lee & Chen. She can be contacted at: cjchen@tsailee.com.tw
