Petty Patents Under the New Patent Act

published on 3 Aug 2012 

Utility Model Patents, also known as Utility Models or petty patents, along with invention and design patents, are three kinds of patent rights protected under the Taiwan Patent Act.  Since the soon-to-be enacted new Patent Act involves an overhaul of the stipulations related to Utility Models, various aspects of Utility Model protection in Taiwan are explored in the following questions and answers.

What kinds of inventions are protectable by a Utility Model?

A utility model refers to a creation of technical ideas that is related to the shape or structure of an article, or to the combination of articles, in which the creation or combination is realized utilizing the laws of nature. Thus, a utility model may be defined as a creation of technical concepts with respect of the shape or structure of an article, or to a combination of articles, that possesses a new purpose or improved efficacy.

What kinds of creations are excluded from Utility Model protection?

A Utility Model cannot protect a creation that is not directed to the shape or structure of an article, or a combination of articles. For example, a process or a composition patent can only be protected as an

invention, rather than a utility model.

Is substantive examination conducted before the application is allowed?

Only a formality examination will be conducted for a Utility Model patent application. There is no substantive examination. However, a Utility Model patent application may be rejected for any of the following reasons:

(1) The creation is not directed to the shape or structure of an article, or to a combination of articles.

(2) The utility model creation is contrary to public order or morality.
(3) The description, claims and drawings are not in conformity with the written description requirements.

(4) The utility model patent application is not in conformity with the unity of invention requirement.
(5) The description, claims and drawings fail to disclose essential matter or are obviously unclear. This refers to obvious flaws that can be identified during a formality examination.

(6) An amendment for the Utility Model application obviously extends beyond the scope of the description, claims or drawings as filed.

What represents prior art for a Utility Model?

1.  Any publication published prior to the filing date (or priority date).

2.  A Utility Model put to public use or which has become known to the public prior to the filing date (or priority date). 

3.  A Utility Model identical to what is disclosed in another Utility Model patent that is filed prior to, but laid-open or published after the filing of the Utility Model.

What are the patentability requirements for a Utility Model?

Same as an invention patent: a Utility Model must be industrially applicable, and must possess novelty and inventive step. 

Are divisional applications permissible for a Utility Model application?

If a Utility Model patent application contains two or more Utility Models, the application may, upon notice given by the patent examiner or upon request by the applicant, be divided into two or more divisional applications. The divisional applications should be filed before a decision for grant or rejection is made.

How long does it take from the filing of a Utility Model application to its grant?

A Utility Model patent can be granted as early as within 6 months after filing.

What is the term of protection for a Utility Model?

The patent term of a Utility Model patent is ten (10) years from the filing date of the utility model patent application.

Is there a requirement for annuities with respect to a Utility Model, and if so, when are the annuities due?

Yes, annuities must be paid for a Utility Model. The first annuity should be paid along with the grant fee. The deadlines for annuities are based on the publication date; therefore the next annuity must be paid prior to the subsequent anniversary date of the publication date.

Is it possible to convert an invention or design patent application into a Utility Model application, or vice versa? If so, what are the requirements?

An invention or design patent application may be converted into a Utility Model application, and a Utility Model patent application may be converted into an invention or design application. 

The applicant may request for patent conversion while the patent application is still pending, but no conversion can be applied for if the original patent application has been granted and the decision of grant has been served.

If a conversion application is to be filed seeking conversion from an invention or design patent application into a Utility Model application, such an application must filed within two (2) months from the date the decision rejecting the original patent application is served.  

If a conversion application is to be filed seeking conversion from a Utility Model patent application into an invention or design application, such an application must be filed within thirty (30) days from the date the decision rejecting the Utility Model patent is served.

Is it possible to secure a Utility Model application via the PCT system? And if so, is it possible to enter the PCT National Phase with both an invention application and a Utility Model application?

Taiwan is not a PCT member country; therefore it is not possible to file any patent application through
the PCT route. However, Taiwan accepts any patent application, including an invention application and a Utility Model application, which claims priority to a corresponding PCT application. 

Applicants can file both invention and utility model applications at the same time for the same innovation. Therefore, both applications may claim priority to the PCT application.

The benefit of filing both invention and Utility Model applications at the same time is that applicants may obtain earlier Utility Model protection. However, if the invention patent is subsequently granted, the applicant will be required to elect one of the two granted rights. If the applicant decides to keep the invention patent, upon election of the invention patent, the utility model will be considered to never have existed. It is important to note that an invention patent application will not be granted if the Utility Model patent right has extinguished before the decision of grant for invention patent is issued.

For any questions relating to this topic, please contact us at cjchen@tsailee.com.tw