TIPS^®  Taiwan Intellectual Property Special

Issuance of First Technical Evaluation Report  for Utility Model Patent

As of July 1, 2004, UM patent applications are not examined for novelty and inventive step prior to their grant in order to expedite the process of granting patent rights. Since the new system results in uncertainty with respect to the enforceability of the UM patent right, the Patent Law now requires that the patentee of a utility model right present a Technical Evaluation Report issued by the TIPO for the purpose of warning when exercising his/her rights, in order to avoid abuse of the new UM system.

The first Technical Evaluation Report was made by the Taiwan Intellectual Property Office on March 30, 2005. Within the Report, the examiner conducted a patent search to uncover any relevant prior art and provided evaluation with respect to whether the claimed utility model as met the “novelty” and “inventive step” requirements in a claim-by-claim fashion. The codes used in the Report categorize each claim to be evaluated into six (6) different categories, as follows:

Code 1: the utility model as defined in the claim is deemed to lack novelty in view of the prior art as uncovered;

Code 2: the utility model as defined in the claim is deemed to lack an inventive step in view of the prior art as uncovered;

Code 3: the utility model as defined in the claim is deemed to be identical to the contents described in the specification and drawings submitted along with an application for invention or utility model patent that is filed prior to but laid-open or published after the filing of the present application;

Code 4: the utility model as defined in the claim is deemed to be identical to the invention or utility model covered in an application for invention or utility model patent that is filed prior to the present application;

Code 5: the utility model as defined in the claim is deemed to be identical to the invention or utility model covered in an application for invention or utility model patent that is filed on the same day of the present application; and
Code 6: no prior art for negating the novelty or inventive step of the utility model as defined in the claim has been found.

It, however, should not be overlooked that the Technical Evaluation Report does not have legal binding effect, and is not categorized as an administrative order either. The Report is merely a reference for excising the UM patent rights or for serving as the patentee’s technical reference. Thus, even if the Technical Evaluation Report finds a UM patent right non-patentable, a third party will still need to initiate an invalidation action to invalidate the UM patent right.