TIPS^®  Taiwan Intellectual Property Special

Filing Strategy for Invention and UM Patent Applications

It is a common practice to file an invention patent application and a utility model (UM) patent application simultaneously for one invention because the threshold of inventive step requirement of a UM patent is not as high as that of an invention patent. After the New Patent Law takes effect, UM applications are only subject to formality examination. Without substantive examination, a UM patent might be registered/issued within 8 months from the filing date. The applicant would then let the UM patent lapse and opt to maintain only the invention patent application. Under the Patent Law in Taiwan, such a filing strategy is permissible. However, the invention patent right and the UM patent right of the same invention should not co-exist simultaneously, and the time for making a choice differs depending on the timing of the two filing applications.

If the invention patent application and the UM patent application are filed on the same day, the UM patent will be issued first because it is only subject to the formality examination. The invention patent application will not be examined for the substance until the request for the substantive examination within 3 years after the filing. During the substantive examination, the corresponding UM patent application for the same invention will be found. According to Article 31 of Taiwan Patent Law, the applicant has to choose one between the invention patent or UM patent for the invention, within a prescribed period. Failure to make such a choice, both of the invention patent and UM patent should be rejected. Therefore, the applicant will have to decide whether to abolish the UM patent right before the examination of the invention patent application is complete. Should the applicant choose to give up the UM patent, if later substantive examination concludes that the invention patent should not be granted, the applicant will go home empty-handed.

Therefore, we often suggest that the applicant file the invention patent application one day earlier than the UM patent application. When doing so, the UM patent will be granted first because it only subject to the formality examination. Even if, during the examination of the invention patent application, the existence of the UM patent is found, the invention patent application was filed first. The UM patent will not bar the invention patent. In the meantime, the UM patent will stay valid unless an invalidation action is brought against it because, under the formality examination system, the TIPO will no longer have the authority to revoke a granted UM patent ex officio. After the invention patent is granted, the applicant may then let the UM patent lapse and maintain only the invention patent right. This strategy will ensure that the applicant can obtain at least one of the patent rights, provided that there is no invalidation brought by a third party against the UM patent.

Nevertheless, under the strategy, it has to bear in mind that the UM patent acquired should only be used for promotion purpose. Article 105 provides that, if the UM patent right is invalidated, the patentee should be liable for any damages occurred to a third party caused by enforcement of the UM patent right before the invalidation. When filing invention patent application and UM patent application simultaneously, the applicant should know that it is very likely to abolish the UM patent right later. It is also strongly recommend that the application should enforce the UM patent right carefully to avoid damages once the UM patent lapses.