TIPS^®  Taiwan Intellectual Property Special

Recent Development of Formality Examination of  Utility Model Patent Application

After the decriminalization of patent infringement became effective on March 31, 2003, the Executive Yuan (Taiwan Cabinet) intends to announce that the formality examination system for utility model patent applications will take effect on July 1 next year (2004). However, in order to complete all the pending utility model applications under the current substantive examination process, any utility model patent application filed on or after July 1, 2003 will only go through the formality examination, instead of the substantive examination.

Most of the countries in the world tend to abolish the substantive examination for utility model and to grant the right earlier. After adopting the formality examination system, utility model applications will not be examined for novelty and inventive steps. The new system may result in uncertainty with respect to the contents of the utility model right. Therefore, any person (including the patentee and any one in the general public) may apply for a “Technical Evaluation Report” from the competent authority, i.e. the TIPO. Furthermore, it is required that the patentee should provide the Technical Evaluation Report when asserting the utility model patent rights, in order to avoid abuse of the new utility model system, which may hinder the R&D of third parties in the related field.

It should be noted that the Technical Evaluation Report does not have legal binding effect, and is not an administrative order either. It is merely a reference for excising the utility model rights or use of the technology. It was specifically pointed out in the legislation history of the amendment that the purpose of the Technical Evaluation Report is only to prevent abuse of the right, and that even if the patentee does not provide said report, he/she is not barred from initiating a civil suit. Nevertheless, without the Technical Evaluation Report, if the utility model patent is later invalidated, the patentee is liable for the damages to the accused caused by the assertion of the rights before the utility model patent is invalidated. However, as the Technical Evaluation Report is not an administrative order, no administrative appeal is available whatsoever. If the applicant intends to reduce the uncertainty in exercising the rights to a utility model patent, it is highly recommended that the application be filed before July 1, 2003 for the last opportunity of the substantive examination, or filing an application for the Technical Evaluation Report immediately after the utility model patent is issued.