According to the State Intellectual Property Office of the People’s Republic of China (SIPO), it is not possible to claim the priority of a Taiwanese patent application at the time of filing a PCT application with the SIPO as receiving office yet, although Taiwan and Mainland China observe mutual recognition of priority rights since November 22, 2010.

    Taiwan is a member of the WTO (although not a country party to the Paris Convention), so it is possible to claim the priority of a Taiwanese patent application when a PCT application is filed, as set forth in Rule 4.10 of the Regulations under the PCT: “Any declaration referred to in Article 8(1) (“priority claim”) may claim the priority of one or more earlier applications filed either in or for any country party to the Paris Convention for the Protection of Industrial Property or in or for any Member of the World Trade Organization that is not party to that Convention.”

    With the signing of the Economic Cooperation Framework Agreement (ECFA) and Cross-Strait Agreement on IPR Protection and Cooperation on June 29, 2010, and the coming into effect on September 12, 2010, Taiwan and Mainland China strengthen the cooperation on several aspects, such as banking, tariff reduction, and intellectual property. Under the cross-strait IPR agreement, Taiwan and Mainland China observe mutual recognition of priority rights to patents, trademarks and plant varieties within the spirit of WTO principles. Effective November 22, 2010, the SIPO and TIPO mutually recognized priority rights to patent, trademarks and plant varieties. However, such priority claim does not apply to the filing of the PCT application with the SIPO as receiving office, as per the provisions of the cross-strait IPR agreement.

    On the contrary, according to Taiwan Patent Examination Guidelines P.2-5-2 and P.2-5-3, when filing a Taiwanese patent application, an applicant is able to claim priority right to a PCT application as long as any of the designated countries is a member of the WTO. Please refer to Article 4-A-(2) of the Paris Convention: “Any filing that is equivalent to a regular national filing under the domestic legislation of any country of the Union or under bilateral or multilateral treaties concluded between countries of the Union shall be recognized as giving rise to the right of priority.”

     To sum up, the present practice is:

1.       when filing a PCT application with the SIPO as receiving office, an applicant cannot claim priority right to a Taiwanese patent application

2.       when filing a PCT application with receiving offices other than the SIPO, an applicant can claim priority right to a Taiwanese patent application.

3.       when filing a PCT application with receiving offices other than the SIPO, an applicant can claim priority right to a PCT application as long as any of the designated countries is a member of the WTO (including China).