Patent

TIPO Speeds up Issuance of Technical Evaluation Reports for Utility Model Patents

Utility model patents in Taiwan are subject to formality examination only; after the publication of a utility model patent, anyone can request the Taiwan Intellectual Property Office (TIPO) to issue a technical evaluation report (TER) for the utility model patent. With the aim of speeding up the completion of the TER and re-categorizing the cases for which notification of the applicant to submit an explanatory statement are needed, TIPO has scheduled to implement the Measures for Speeding up Issuance of TER for Utility Model Patents from March 1, 2009, of which the main points of differences are as follows:

1. Where there is pending claim
   amendment
   Current Practice: Presently, at the time of formulating the TER, if there is any pending claim amendment and the patentee specifies that the technical evaluation should be made on the basis of claim amendment after being examined and published, the TIPO will not issue the TER until the pending amendment has been examined and published by the TIPO.
   New Measures (since March 1, 2009): In the new measure, even if a claim amendment has been submitted to TIPO, the TER will be issued within the specified time limit on the basis of the originally published claims.
   However, if before implementation of this new measure the patentee has specified that the technical evaluation should be made on the basis of claim amendments after being published, the TER will not be issued until the pending amendment has been examined and published by the TIPO.
   
    
2. Notification of the applicant to submit
   an explanatory statement
   Current Practice: Since January 1, 2007, when the examiners have found any claim lacking novelty and/or an inventive step, and assigned the codes 1, 2 and/or 3 to the claim, the examiners were required to notify the patentee to submit an explanatory statement.
   New Measures: Only where all the claims lack novelty and/or an inventive step, would the patentee be notified to submit an explanatory statement.
   
    
3. References cited in the TER
   Current Practice: Currently, patent references referred in all the TER are always provided by the IPO.
   New Measures: Due to the popularity of the Internet, it is now easy for the general public to obtain patent references published by other countries. To eliminate waste of resources, except for cases that are specifically cited by the TER against patentability, patent cases referred in the reports are no longer provided.
   However, in case the requests for TER were made by natural persons who did not appoint an agent, the TIPO will continue to provide copies of relevant materials due to their insufficient ability to obtain such materials.