Taiwan - Neither Computer System Abnormality Nor Employee’s Domestic Calamity Constitutes A Valid Cause For Reinstatement Of A Patent Application That Was Rejected Due To The Applicant’s Failure To Timely File The Required Priority Document.

Legal News & Analysis - Asia Pacific - Taiwan - Intellectual Property

9 May, 2019

 

Qualcomm filed an invention patent application on May 8, 2018 with TIPO which claimed 3 priorities, but missed the submission deadline for filing the proof of priority right for the first priority claim, resulting in TIPO’s rejection of the first priority claim.  Qualcomm filed an administrative appeal based upon Paragraph 2 of Article 17, of the Patent Act, asserting that the application should be reinstated since the late submission was due to circumstances not attributable to the company. 

 

Qualcomm contended that:

 

(1) Qualcomm relies upon its computer system to correspond with its patent agents of many countries every day to manage the various legal filing periods for a large volume of patent applications. A data mismatch occurred in the Qualcomm’s computer system update, and this is not attributable to the company.

 

(2) The employee in charge of the application encountered a family emergency and took leave before the statutory period. 

 

The Administrative Appeal Board (“AAB”) of the Ministry of Economic Affairs affirmed TIPO’s decision and ruled that:

 

(1) Abnormality of computer database was predictable and the user of the database should undertake adequate measures to cope with the circumstances.

 

(2) Turnover and replacement of employees were very common for a company, and Qualcomm should have taken necessary action to manage the circumstances, such as the establishment of a backup system and ensure the normal operation of the business.  

 

Based on the aforementioned reasons, AAB concluded that a leave of the employee could not be deemed as an event not attributable to the company.

 

 

For further information, please contact:  

 

Charles Ma, Tsar & Tsai Law Firm

Patent@TsarTsai.com.tw