August 15, 2017

No man is an island, but Taiwan is, and so are Cabo Verde, Fiji, the Maldives, the Solomon Islands and Vanuatu

By Mark A. Frentrup, Ph.D., Principal

Taiwan is not a “PCT country,” so everyone knows that you can’t go the PCT national stage route to get a patent there.  Instead, you have to make a separate filing directly in Taiwan within the one year “convention period,” which is the same time frame that you have to file a PCT application.

The one-year “convention period” refers to the Paris Convention for the Protection of Industrial Property.  Taiwan has never signed on to the treaty, but has made a separate agreement with the US in 1996 establishing priority between the two countries.  The normal route for an American applicant, therefore, is a first filing in the U.S. followed by a filing in Taiwan (TW) within a year.

Reversing the scenario, can an applicant file a PCT application that claims priority to a TW national application?  The short answer is “yes.”  How come?

Although Taiwan is neither a PCT contracting state nor a member of the Paris convention, it is a member — since 2002 — of the World Trade Organization (WTO), and that explains it.

Article 8(1) of the PCT provides that “[t]he international application may contain a declaration, as prescribed in the Regulations, claiming the priority of one or more earlier applications filed in [a Paris Convention country] …”  That seems to rule out Taiwan.

But the Regulations in turn say that “[the] declaration referred to in Article 8(1) … may claim the priority of one or more earlier applications filed either in [a] country party to the Paris Convention for the Protection of Industrial Property or in [a] Member of the World Trade Organization that is not party to that Convention.”

So, because Taiwan is a WTO member, the PCT regulations provide that an international application may claim priority to a Taiwan national application.  That the regulation appears to go beyond what the treaty itself permits is grist for future analysis.

For the record, other islands are in the same boat as Taiwan (not PCT, not Paris Convention, but a WTO member).  They are Cabo Verde, Fiji, Maldives, Solomon Islands and Vanuatu.  Non-island states include Myanmar.