眾律國際法律事務所

國內優先權 / 專利工程師林孟萱

Domestic Priority right /Patent Engineer Meng-Xuan Lin

一.前言

1. Preface

為使申請人在國內也可享受和國際優先權相同之利益，專利法90年修整導入國內優先權制度。國內優先權的目的是為使申請人於提出發明或新型專利申請案後，可以該申請案作為基礎(先申請案)，於12個月內再提出修正或合併新的請求標的再提出新的申請案(後申請案)，且能以先申請案之申請日，作為後申請案專利要件審查基準的時間點。

In order to guarantee its applicant to enjoy priority right domestically and internationally, Patent Law amended its domestic priority right system after 2001. The purpose for such domestic priority right is that an applicant lodged its invention application or utility model application as a base (prior patent application), to where you can lodge other applications within twelve (12) months period (later patent application), the priority date claimed at the prior patent application would be used as the reference date during the patentability examination.

二.國內優先權

2. Domestic Priority Right

專利法第28條規範了國內優先權的相關規定。國內優先權只適用於發明與新型專利，且發明與新型專利之間，可互為主張優先權之基礎案，但國內優先權不適用於設計專利；主張國內優先權之先申請案與後申請案的申請人須為同一人，如先申請案的人請人是複數，則應完全一致。

Patent Law Article 28 sets out its specification of relevant provisions for domestic priority right. Such domestic priority right would only be used for invention application or utility model application. In between its invention application and utility model patent, he/she may claim for such priority right in respect of the invention or creation described in the specification or drawings submitted along with his/her prior patent application; however such principle does not apply to a design patent as such. For people who claims for its domestic priority right shall be the same applicant for its prior patent application and later patent application, same rules apply to more than two applicants that need to be the same.

主張國內優先權可於後申請案增加、補充先申請案未揭露的技術內容，擴大專利保護範圍；也可透過主張國內優先權，將判斷申請案是否符合新穎性、進步性或先申請原則的專利要件的審查基準日提前到先申請案的申請日，但不是將申請日回溯至優先權日。因此，申請人可利用國內優先權制度，在先申請案優先權期限將到期前，提出後申請案，讓專利權保護期限延長近1年。

For people who seek for domestic priority right, they can do so by adding up its application and to add more details on its technical contents, for which has not been previously disclosed in the prior patent application so as to expend its coverage for patent protection. Through domestic priority claim, we can determine whether such application satisfied its patent application requirement in terms of its novelty, progressive or prior patent application’s application elements. Where an applicant files a further application based on a prior invention application or utility model application, he/she may claim for the priority right in respect of the invention or creation along with his/her prior patent application within twelve (12) months from the filing date of the prior patent application. For a patent application claiming for its priority, the priority date shall be used as a reference date during the patentability examination.

然國內優先權不可累積主張，先申請案已主張國內優先權或國際優先權之部分，不得於後申請案中主張國內優先權。先申請案分割之子案或改請案亦不得再被另一案主張國內優先權，但分割後存續之原申請案不在此限。若先申請案被已公告、被審定不予專利、已撤回或被智慧財產局處分不受理時，則不可作為國內優先權的基礎案。

一申請案主張國內優先權之後，先申請案將自後申請案申請日後滿15個月，視為撤回，以避免重覆公開以及審查 。即使後申請案僅就先申請案的部分主張優先權，該先申請案仍全部被視為撤回，若要保留先申請案未被主張國內優先權的部分，須於主張優先權前，先對先申請案提出分割申請。

However you cannot accumulate its domestic priority claim especially for its application which has been used for its domestic or international priority claim nor to use the later patent application for its prior patent application. For its divisional application, you cannot use this as another case to claim for its domestic priority right; however exception applies if such division coexists with the prior patent application. However if such prior patent application is published and it was determined not to grant such patent, be withdrawn, or if such application is rejected on procedural grounds or on the ground of the ineligibility of the applicant, such prior patent application cannot be used as domestic priority right application.

-where claiming for such priority is made and the examination decision has been made in respect of the prior patent application, such application shall be deemed to be withdrawn after 15 months from its filing date to avoid repetitive disclosure and examination. Even the later application claim for its priority right for its prior application, such application shall be deemed to be withdrawn. If you wish to preserve the part that has not claim for its domestic priority right for its prior patent application, prior to such priority claim, you would need to lodge a divisional application to do so.

參考資料：

專利法逐條釋義

專利審查基準

經濟部智慧財產局https://www.tipo.gov.tw/mp.asp?mp=1

References:

Step by Step interpretation of Patent Law

Patent Examination Guidelines

Intellectual Property Office <https://www.tipo.gov.tw/mp.asp?mp=1>