根據2019年對印度專利細則的修改，印度商工部 (The Ministry of Commerce and Industry) 公告 2020年10月生效的《專利施行細則》（The Patents Rules, 2003）修正案，除了調整專利的商業實施申報規定，也配合PCT的相關規定，放寬了優先權證明文件 (Filing of priority document) 的提交規定。
藉由 PCT（專利合作條約 Patent Cooperation Treaty）途徑進入印度申請專利的申請案，修改為符合《PCT施行細則 (Regulation under the Patent Cooperation Treaty)》第17.1條 (b)之二的規定，若在申請專利的國際公開日前，國際局能透過WIPO 電子資料庫交換取得優先權案文件，則申請人可以不用再提交優先權文件文本。
Rule 17.1 (b-bis) Where the priority document is, in accordance with the Administrative Instructions, made available to the International Bureau from a digital library prior to the date of international publication of the international application, the applicant may, instead of submitting the priority document, request the International Bureau, prior to the date of international publication, to obtain the priority document from such digital library.
而以往，印度申請案，若優先權案文本並非英文時，申請人需先提交優先權文件的全文譯本。而印度細則根據《PCT施行細則》第51之2.1條e段規定修改後，只有在需要確認優先權案內容是否可以支持申請案的可專利性時（when the validity of the priority claim is relevant to determination of patentability）、或是國際申請日有錯誤要更正時（when errors in the international filing date have been corrected ），才需要依照印度審委要求，提交經過認證且與優先權案原文對應的英譯本。
“(1) Where the applicant in respect of an international application designating India has not complied with the requirements of paragraphs (a), (b) or (b-bis) of rule 17.1 of the regulations under the Patent Cooperation Treaty, and subject to paragraph (d) of the said rule 17.1 of regulations under the Treaty, the applicant shall file the priority document referred to in that rule before the expiration of the time limit referred to in sub-rule (4) of rule 20 in the Patent Office.
(2) Where sub-paragraph (i) or sub-paragraph (ii) of paragraph (e) of rule 51bis.1 of the regulations under the Patent Cooperation Treaty is applicable, an English translation thereof duly verified by the applicant or the person duly authorised by him shall be filed within the time limit specified in sub-rule (4) of rule 20.
(3) Where the applicant does not comply with the requirements of sub-rule (1) or sub-rule (2), the Patent Office shall invite the applicant to file the priority document or the translation thereof, as the case may be, within three months from the date of such invitation, and if the applicant fails to do so, the claim of the applicant for the priority shall be disregarded for the purposes of the Act.”
The booming economy and rapid market growth in the southeast and south Asian countries have become the focus of public attention in Taiwan since the government announced the “New Southbound Policy”, one of Taiwan’s most ambitious international outreach programs ever. The related topics are particularly attractive to businesses exploring new markets or looking for new manufacturing bases.
To help interested businesses getting ready for the southbound markets and able to align market plans with overall consideration of their IP protection strategies, TIPO (The Intellectual Property Office) and TWPAA (Taiwan Patent Attorneys Association) organized a seminar on “IP Landscape in New Southbound Countries” and invited the intellectual property office officials and patent attorneys, from Malaysia, the Philippines, Thailand, Vietnam, Indonesia, and India, to give incisive introductions to the current patent system each country, including application requirements, patent examination practices, the time limit for OA response, patent term, IP enforcement systems, etc.
Wrap-up Session: (from left) the moderator Patent Attorney Ms. Shu-Ching Wang (Taiwan), Dr. Dr Chris Hemingway (Malaysia), Mr. Jose Eduardo T. Genilo (Philipine), Dr. Bondage Krairit (Thailand), Mrs. Nguyen Nguyet Dzung (Vietnam), Mr. Sidharth Bansal (India) and Ms. Juliane Sari Manurung (Indonesia)
The one-and-a-half-day seminar began on August 27 at Tsai Lecture Hall, College of Law, National Taiwan University in Taipei. TIPO’s Director General Hong Shu-min Hong Shu-min, in her welcome remarks, indicated that TIPO has been eagerly promoting bilateral exchanges with our neighbors in the region on IP matters since the launch of the New Southbound Policy. For example, the office has set up a specialized section on its official website to introducing IP regimes, IP application processes, law enforcement agencies, and legal relief mechanisms in Southeast Asian and South Asian countries to Taiwanese businesses. TIPO also held seminars on the IP Landscape in Southeast Asian Countries in 2017 and 2018 to further mutual understanding between Taiwan and the region. Both events were very well received. For this third year, TIPO worked with TWPAA in expanding the focus to a wider scope and invited patent attornies to share their insights on IP matters of concern when investing in the new southbound countries.
臺灣經濟的下一步，一定要考慮到東南亞以及印度市場。
Better Use of Local IP Regimes Creates win-win benefits
“With this support, we believe that our businesses will be able to make better use of local IP regimes, come up with better IP portfolio plans, and increase their competitive edge when investing in the region. I am certain that this will create a win-win situation that allows for economic development and greater revenues for Taiwan and our New Southbound partners.” said Ms. Hong.
TWPAA Chairman Tony Lin also gave his welcome remarks. He started by saying “hello” in English, Malaysian (Indonesian), Thai, Vietnamese, Hindi, and Chinese as well as how friendly people, indigenous cultures and marvelous landscapes in Southeast and South Asian countries have left him with great impressions. In his opinion, with all things considered in the current global context, heading southbound has become one of the ultimate options for Taiwanese businesses exploring growth opportunities. The “New Southbound Policy” initiated in 2016 fully reflects the importance of the region to Taiwan’s economy.
Mr. Lin said, “As patent attorneys, our mission is to provide adequate services to clients so that their investment in new markets can be safely secured with sufficient IP protections. To pursue the best interest of our clients, we should equip ourselves with the required knowledge. Study IPR regimes, prosecutions, enforcements, practices in the southbound region as hard as we study those in China.” He encouraged colleagues to catch up and look forward to further collaborations with IP experts from the Southbound countries.
2019年新南向智慧財產研討會為期一天半，受邀講者包括馬來西亞專利程序與國際登記組副組長Mrs. Zaiton Nordin、菲律賓智慧局智財專家 Ms. Melanie G. Binauhan、泰國智慧局資深審查官Mr. Panja Haohan及越南智慧局專利審查中心副主任 Mr. Phan Thanh Hai 等官員；受邀的當地公會代表則包括來自馬來西亞的 Dr Chris Hemingway、菲律賓的 Mr. Jose Eduardo T. Genilo、泰國的 Dr. Poondej Krairit、越南的 Mrs. Nguyen Nguyet Dzung、印度的 Mr. Sidharth Bansal 及 印尼的 Ms. Juliane Sari Manurung 。
The invited IP Office officials and attorneys are Mrs. Zaiton Nordin, the Director of patent formality and international registration division of the IP Office and Dr. Chris Heminway from Malaysia; Ms. Melanie Binauhan, the IPR Specialist IV and Asst.division chief of the IP Office and Mr. Jose Eduardo T. Genilo from Philippines; Mr. Panja Haohan, the Senior Patent Examiner of the IP office and Dr. Poondej Krairit from Thailand; Mr. Phan Thanh Hai, the Deputy Director of Patent Examination Center and Mrs. Nguyen Nguyet Dzung from Vietnam; Mr. Sidharth Bansal from India and Ms. Juliane Sari Manurung from Indonesia.
The New Southbound policy launched in August 2016 targets markets in the 10 member states of the Association of Southeast Asian Nations (ASEAN), six countries in South Asia, plus Australia and New Zealand. Among which, ASEAN nations, in particular, are of crucial importance to Taiwan’s trade and economic partnerships. Its regional integration over past decades not only has enjoyed rapid economic growth but also brought fast growth in personal income and domestic demand. ASEAN as a whole is Taiwan’s second-largest trading partner, accounting for 15 percent of total trade in 2018. South Asia, with a population of nearly 1.8 billion, also has experienced a long period of robust economic growth, averaging 6% a year over the past 20 years. These countries, at vastly different stages of development, all share immense growth potential.
IPR can protect a company’s business achievements while generating more value for the company. When entering the local market of a New Southbound country, if using the country’s IPR system properly and setting appropriate IP portfolio strategies, the company shall be able to leverage its advantages more.
