Under the patent system in Taiwan, an invention relating to the shape, structure or construction of an article may be protected by either “invention patent” or “utility model patent.” The term of the “invention patent” is longer (20 years from the filing date) than that of the “utility model patent” (10 years from the filing date). However, grant of an invention patent takes an average of 2-3 years in substantive examination, whereas only 4-6 months of formality examination is required for granting a utility model patent. In order to obtain patent right as early as possible, some applicants may choose to apply for both “invention patent” and “utility model patent” for the same invention.
In the past, the Patent Act does not permit an invention to be protected by two kinds of patent right. Therefore, if an applicant files applications for “invention patent” and “utility model patent” for the same invention on the same date, the Taiwan Patent Office (“TIPO”) will request the applicant to select one from the two applications within a specified time limit before issuing a decision of allowance to the invention patent application. If the applicant selects “utility model patent” or fails to make the selection within the specified time limit, TIPO will reject the invention patent application. If the applicant selects “invention patent,” the “utility model patent” previously granted after formality examination shall be deemed non-existent ab initio. Such requirement has caused concerns to a patentee, especially when a patentee has enforced its right based on the previously granted utility model patent before it is deemed as non-existent ab initio. For example, if a patentee had licensed or transferred to another the previously-granted “utility model patent,” should the patentee return the royalty or the proceeds received? What if the patentee had sued other people for infringing its previously-granted “utility model patent” and been awarded damages, should the patentee return the damages received?
To solve the aforesaid problems under the old Patent Act, the Legislative Yuan passed the amendment to Article 32 of the Taiwan Patent Act on May 31, 2013, which went into effect on June 13, 2013. According to the amendment, where an applicant respectively files applications for an invention patent and a utility model patent for the same invention on the same date, if the applicant selects the “invention patent” before the TIPO grants the “invention patent”, the previously-granted “utility model patent” shall no longer be deemed non-existent ab initio but shall continue to exist until the day immediately before the date of the grant of the invention patent. In other words, the applicant’s right conferred by the “invention patent” may now follow the “utility model patent” and be continuous. However, in order to protect the interests of the public, the amendment requires the applicant to voluntarily disclose the fact in both applications that it has filed applications for “invention patent” and “utility model patent” for the same invention on the same date. The Legislative Yuan also amended Article 41 of the Patent Act in line with the amendment to Article 32. According to the amended Article 41, after the invention patent is granted, the patentee shall be entitled to select only one remedy, i.e. claiming compensation based on “invention patent” or claiming damages based on “utility model patent”, in order to avoid double damages recovery.
Given the protection provided to patentees by the newly amended Patent Act, it is advisable to respectively file “invention patent” application and “utility model patent” application for some important inventions on the same date to obtain the protection as early as possible.