Taiwan – The IP Court Held That The Time Limit For Submitting The Evidentiary Documents Of The Foreign Depository Institution Is Mandated By Statute And Could Not Be Cured By A Late Submission.

Since the applicant of the invention patent application No. 104132343 failed to timely submit the required evidentiary documents of the foreign depository institution within 16 months after the earliest priority date, the TIPO ruled based on the latter part of Article 27-II of the Patent Act that the deposit of biological material be deemed to have not been made. 

 

After the applicant made an unsuccessful administrative appeal, the matter was brought before the IP Court. 

 

By Judgement 105-Tsing-Chuan-Sue-Tze No. 88, the IP Court affirmed the TIPO’s ruling and held that, based on the legislative reasons of Article 27-III of the Patent Act (“Where priority is claimed under Article 28, the time limit set forth in the preceding paragraph shall be sixteen months after the earliest priority date”), the time limit for submitting the deposit should be a “statutory period” and not a “specified period”, and thus the applicant could not cure the failure to submit evidentiary documents of the foreign depository institution by a late submission. 

 

The Court held that the patent applicant’s late submission of evidentiary documents of the foreign depository institution failed to comply with the provision of Article 27-III of the Patent Act and that the TIPO’s ruling that “the deposit should be deemed to have not been made” was correct. 

 

 

 

For further information, please contact:  

 

Joyce I. Ho, Partner, Tsar & Tsai Law Firm

joyeho@tsartsai.com.tw