TIPS^®  Taiwan Intellectual Property Special

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Amendments of the Patent Law Regarding Filing Two Applications for One Invention and Liability of Damage for Utility Model Patent

The Taiwan Intellectual Property Office (TIPO) aims to revise Paragraph 1 of Article 31 of the Patent Law of Taiwan, to allow the filing of two applications for the same invention or creation on the same day (“one invention two applications”). In other words, as long as the following two requirements are met, the applicant may file for an invention patent application and a utility model patent application for the same invention or creation on the same day:

1. Declaring the filing of two applications at the time of filing (the declaration cannot be supplied at a later date); and

2. Before the decision is made in respect of the invention patent application, the utility model patent application has not been extinguished or revoked.

For the filing of “one invention two applications,” the TIPO will issue a notification that requires the applicant to elect one of the applications before allowing the invention patent application. If a declaration of “one invention two applications” has been made at the time of filing, but the contents of the invention patent are no longer identical to the utility model patent due to supplement or amendment, the examiner may determine whether the substantive contents are similar. If not, the TIPO will not issue a notification of response. On the other hand, if the applicant decides to abandon the utility model patent, the utility model patent rights shall be deemed extinguished from the date of the publication of the corresponding invention patent, so that the rights is continuous. An invalidation proceeding may also be requested for violation of the aforesaid regulations and the concealment of the truth of “one invention two application.” The examiner may also revoke the applications ex officio.

Regarding scope claimed in the specification or drawings after amendment or supplement that exceeds that of the original application, no patent shall be granted for a divisional application; even though a utility model patent application is only examined in formality, it will still be examined if the scope notably exceeds the original application, and shall be included in the technical evaluation report.

Since that the TIPO plans to adopt the “one invention two applications” system, and national priority right can be claimed, the TIPO is considering abolishing the system of invention and utility model patent conversion. Besides, the nature of a utility model patent and a design patent is very different, with on being technically oriented and the other being ornamentally-oriented. Therefore, in order to avoid complication, the TIPO also plans to abolish the conversion between utility model and design patent. Nevertheless, upon abolishment of the conversion system, in order to change the category of an invention application to one for a utility model, an applicant can only file a utility model application claiming the national priority within the 12-month period, which may cause inconvenience for the applicants. To learn the need of the applicants, the TIPO will evaluate the ratio of the rate of the conversion of an invention patent to a utility model patent after twelve months, before making the final decision on whether total abolishment the system of conversion is to be adopted.

Lastly, the TIPO is considering giving the applicants of utility model patents more responsibility by amending Article 105 of the Patent Law regarding the patentee’s liability of damage from exercising a utility model patent right prior to its revocation. Paragraph 2 of the said Article will be amended into “In the case set forth in the preceding Paragraph, if the exercise of the utility model patent by the patentee is carried out based on the contents of the technical evaluation report associated with said utility model, AND with due care by the patentee, it shall be presumed that the patentee has done no fault in exercising the utility model patent right.” The purpose of the amendment is to prevent the patentee from taking the formality examination of utility model patent for granted by deliberately exercising defective right which may be disadvantage to a third-party. The provisions in the Article not only require the patentees to present a technical evaluation report so as to objectively judge the validity of the right, but also compel the patentees to act cautiously when exercising the rights. If a patentee files a utility model application knowing the fact that the technique has already lost novelty and is subsequently granted a utility model patent, it will be deemed that the patentee has done fault in exercising such right. In other words, other than preparing a technical evaluation report before exercising utility model patent right, a patentee must also present evidence to prove that the right is carried out with due care, in order to be deemed with no fault and be waived from damage liability.