TIPS^®  Taiwan Intellectual Property Special

Reconverting a Design Patent Application Is Acceptable If No Double-Examination

Article 115 of the Patent Law (Article 111 before the Patent Amendment) stipulates that “where an application originally filed for independent new design patent is converted into an associated new design patent application, or an application originally filed for associated new design patent is converted into an independent new design patent application, the filing date of the original patent application shall be taken as the filing date of the converted patent application.” However, it is a general practice of the TIPO that once an independent design patent application is converted into an associated design patent application, it shall not be converted back to an independent design patent application. Nevertheless, where there is no double examination is involved, the “reconverting” may become acceptable.

The design patent at issue was divided from a parent design application and converted into an associated design patent with the parent design. The parent design patent application was then rejected and the applicant intended to convert the design patent at issue into an independent design patent application. The TIPO believed this was a reconverting, which would involve double examination and would intervene the examination process, and therefore denied the converting. The applicant filed an administrative appeal, reasoning that Article 115 of the Patent Law is the only provision regarding converting a design patent application. As the Patent Law does not have any provision regarding re-converting, the examiner has no authority making a rule denying a re-converting because the reconverting “would involve double examination and would intervene the examination process.” Even if the rule is appropriate, the design patent application at issue was not subject to a substantive examination before converting into an associated design patent application, and therefore, no double examination at all is involved.

Furthermore, the re-converting was done in compliance with the Patent Examination Guideline, which provides on page 1-6-15 that where a parent design patent is cancelled or rejected, its associated design patent application under the examination procedure shall converted into an independent design patent application; otherwise the associated design application shall be rejected.” The parent design to which the design patent application at issue is associated was rejected, and the applicant has no choice but converting the design patent at issue into an independent design application. Otherwise, the application at issue would be denied from examination, despite the

difference from the rejected parent design patent. No doubt, the result would severely impair the rights of the applicant.

After applicant filed the administrative appeal, the TIPO revoke its own decision, and take the reconverting application. In short, once TIPO’s double examination is not involved, a reconverting of a design patent application may be acceptable.