Taiwan priority claims: why a USPTO file-wrapper copy did not count as a priority document

1. The short answer

A priority claim in a Taiwan invention or utility model application survives only if the priority document is submitted to the Taiwan Intellectual Property Office (TIPO) within 16 months after the earliest priority date (10 months for a design application). Otherwise the claim is deemed not to have been made (Patent Act, Arts. 29(2), 29(3), 120 and 142(3)). This is a statutory period and cannot be extended.

Meeting the date is only half of it; the document also has to be the right kind. In a first-instance judgment of April 28, 2022 (110 Xing-Zhuan-Su No. 55), the Intellectual Property and Commercial Court dealt with a US applicant that had filed, three days before its deadline, a USPTO-certified copy of the “file wrapper and contents” of its priority application. The court held that this was not a priority document: its certificate said only that the papers were a true copy of the office’s records, and did not confirm that the application had been accorded a filing date. On appeal, the Supreme Administrative Court dismissed the appeal on May 25, 2023 (111 Shang No. 492) and endorsed that reasoning.

TIPO’s own case page, last updated April 17, 2025, still describes the appeal as pending; the case history in the Judicial Yuan database lists no decision after the appeal judgment, and we follow the database. As to finality, the Supreme Administrative Court is the higher of the two levels of administrative courts (Administrative Court Organization Act, Art. 2), and a judgment from which no appeal may be taken becomes binding upon its announcement or, if it is not announced, upon its publication (Administrative Litigation Act, Art. 212(2)). In our reading the appeal judgment is therefore final, although we have not seen a certificate of finality.

2. What Article 29 requires

1. Declaration at filing. The Taiwan application must declare the filing date of the first application, the country or WTO member where it was filed, and its application number (Art. 29(1)).
2. The document within 16 months. The applicant must submit, within 16 months after the earliest priority date, the application papers certified as received by that country or WTO member (Art. 29(2); for utility models, Art. 120); 10 months for a design application (Art. 142(3)).
3. The consequence. If the filing date or the country is not declared, or the document is not submitted in time, priority is deemed not to have been claimed (Art. 29(3)).

The document must be the original. If only a photocopy is submitted within the period, TIPO notifies the applicant to file the original of that same document within a set time, failing which priority is deemed not claimed; a document already exchanged electronically between TIPO and the office of first filing is deemed submitted (Enforcement Rules, Art. 26).

TIPO’s examination guidelines (Part I, Chapter 7, section 1.5) say a priority document normally carries an official certification page with the issuing date, the filing date and the application number, bound with the application papers as accorded a filing date. They list what does not qualify: filing receipts, electronic receipts, filing notices, patent certificates, grant certificates, patent gazettes and file-wrapper copies, and copies notarized or authenticated by a court or another authority. Their first example of a wrong document is a USPTO file-wrapper copy, because it contains material outside the application, such as product catalogs, and does not show whether a filing date was lawfully accorded.

3. The file-wrapper case

The facts, as found by the court:

Date	Event
January 3, 2020	US priority application filed
December 31, 2020	Taiwan invention application filed, claiming that priority
January 13, 2021	TIPO asks for the priority document by May 3, 2021
April 30, 2021	Applicant files a USPTO-certified file-wrapper copy
May 13, 2021	TIPO decides that priority is deemed not claimed
September 14, 2021	Administrative appeal dismissed
April 28, 2022	Intellectual Property and Commercial Court dismisses the action
May 25, 2023	Supreme Administrative Court dismisses the appeal

The applicant argued that its file wrapper showed the filing date, the application number and the application papers, which a 2019 Supreme Administrative Court judgment (108 Pan No. 517) treats as what counts; that the guidelines added a restriction the Act lacks; and that TIPO should at least have invited it to file an original.

4. What the two courts held

Why did the courts refuse to count the copy? Their reasoning comes down to four points.

1. The certificate decides what the document is. The court compared two cover texts. The file-wrapper copy certified only a true copy of the office’s file wrapper and contents. A USPTO priority document, as shown by the sample TIPO put before the court, certifies the papers of an application that “met the requirements to be granted a filing date,” and gives the country code and number for filing abroad under the Paris Convention. The two have different functions and effect.
2. A date printed on a file wrapper is not proof of a filing date. That date was only the date the papers were submitted; a filing date, as Article 25(2) of the Patent Act shows, is the date the required papers are complete. TIPO could not use the copy to verify the claim. The Supreme Administrative Court found no error in this.
3. The guidelines add nothing to the Act. Excluding file-wrapper copies follows from the purpose of Article 29(2). The Supreme Administrative Court added that Articles 28 and 29 were modeled on the Paris Convention, so the document must be certified by the office of first filing; what the USPTO itself accepts did not change this.
4. No invitation to file an original. The Supreme Administrative Court explained that the notice procedure in Article 26(2) of the Enforcement Rules applies where the applicant has obtained a qualifying priority document within the period and filed a copy of it. A file-wrapper copy is neither the original of a priority document nor a copy of one, so TIPO had no duty to send that notice.

In our reading, point 4 matters most in practice: a document of the wrong kind is treated as if nothing had been filed, however early it arrives, and it does not oblige TIPO to ask for an original.

5. Two related cases: a missing access code and a wrongly ordered copy

The same November 2022 TIPO compilation includes two more priority cases, each going wrong at a different step.

The access code left out of the attachments field. A Japanese applicant filed in Taiwan on December 9, 2019, claiming a Japanese application of December 10, 2018, and meant to rely on electronic exchange, which needs an access code. When it filed missing documents through TIPO’s e-filing system on February 10, 2020, the attachments field named six documents but not the form that carried the code. The code was submitted on May 21, 2020, after the April 10, 2020 deadline. At first instance, the Intellectual Property Court (now the Intellectual Property and Commercial Court) held on March 24, 2021 (109 Xing-Zhuan-Su No. 56) that a file not named in the attachments field was not transmitted, whatever folder it sat in, and that the two-month correction period in the Taiwan–Japan exchange directions, as quoted in the judgment, applies only where a code or application number was supplied but wrong. By a ruling of September 9, 2021 (110 Shang No. 432), the Supreme Administrative Court dismissed the appeal as inadmissible, because it did not specify how the judgment violated the law, leaving the first-instance judgment in place.

The wrong copy, ordered by the agent’s assistant. In an application filed on December 3, 2021 with two US priority claims, both priority documents were due by April 4, 2022. The document for the second claim arrived in time; for the first claim, what was filed from April 11 onward was a certificate of the US patent granted on that first application. The applicant sought restoration, citing pandemic mail delays. The administrative appeal decision of August 16, 2022 records the applicant’s statement that the US agent’s assistant had ordered a certified copy of the “patent” rather than of the “filed patent application,” and held that ordinary care would have foreseen and avoided this error, so the delay was attributable to the applicant’s side. TIPO’s compilation lists no court proceedings after that decision; we did not check whether an action was brought.

6. What to do in practice

1. Order the certified copy of the application as filed. Not the file wrapper, not a certificate of the granted patent, not a filing receipt; all three are on TIPO’s list of documents that do not qualify.
2. Read the certificate page when it arrives. The courts’ decision turned on its wording. If it does not identify the application and its filing date, reorder while there is time.
3. If the original will be late, send a copy of its first page within the 16 months. Under TIPO’s guidelines, a first-page copy of the priority document is enough for TIPO to set a time for the original. A copy of some other document does not work.
4. Treat electronic exchange as a filing step with the same deadline. Any access code must be submitted to TIPO within the 16 months, and in an e-filing every attachment must be named in the attachments field.
5. Do not wait for TIPO’s reminder. TIPO sent one in all three cases, but the period runs under the Act, not under the notice.
6. Do not plan on restoration. Article 29(4) lets an applicant request, within the same 16 months, restoration of a claim unintentionally not made at filing or lacking the declared filing date or country; its text does not cover a missing document. Restoration under Article 17(2) requires a natural disaster or another cause not attributable to the applicant, a written request within 30 days after the cause ends, and no more than one year of delay, with the missed act completed at the same time (Art. 17(3)). Under TIPO’s guidelines, whether a cause qualifies is decided case by case; in the 2022 decision, an ordering error on the agent’s side did not.

Where priority is claimed, patentability is examined as of the priority date (Art. 28(4)). In our reading, once the claim is lost, the application is judged as of its Taiwan filing date, so a rival’s publication, or a rival smartwatch shown at a trade fair, between the priority date and that date may be cited against it. For a product already on the market, that can weigh heavily on what the Taiwan patent is worth.

Whether a particular claim can still be kept depends on the documents and dates involved. If a 16-month date is approaching, or TIPO has ruled on a priority document, write to us with the Taiwan application number, each priority application number with its filing date and office, a scan of the certificate page of the document you hold, and the dates it was ordered and received. Our patent practice page describes how we handle filings before TIPO.

7. Related pages

The Taiwan patent filing checklist covers the declaration, the priority document and electronic exchange step by step. The periods are tabulated in Taiwan patent and trademark deadlines, and the priority period for a PCT-family invention is in Is Taiwan in the PCT?