TIPS^®  Taiwan Intellectual Property Special

Formality Examination for Utility Model Patent Applications

Most of the countries in the world tend to abolish the substantive examination for utility model (UM) patent applications and to grant the right earlier. The Patent Law follows the international trend and adopts formality examination system for UM patent applications, which means, after July 1, 2004, utility model patent applications will not be examined for novelty and inventive step. The new system may result in uncertainty with respect to the contents of the UM patent 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, after the UM patent is granted. 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 UM 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 patent rights or for the 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, according to Article 105 of the Patent Law, without the Technical Evaluation Report showing a valid UM patent right, 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. Furthermore, as the Technical Evaluation Report is not an administrative order, no administrative appeal is available whatsoever. Where the patentee or any third party finds the Technology Evaluation Report to his/her disadvantage, no opportunity is offered for the patentee to state his/her opinion, even though this is an ex parte proceeding before the TIPO.