The modified measures for presenting technical evaluation reports of utility patents were implemented by the Taiwan Intellectual Property Office (IPO) on 1 July 2019. The main revisions are as follows:
1.Previously, notification of references used in technical evaluation reports for utility model patents would only be sent to patentees when all of the claims were devoid of novelty or inventive step. After the modified measures, when any of the claims lack novelty or inventive step, the IPO will send such notifications to patentees, asking for explanations.
2.Previously, with respect to the requests for other technical evaluation reports filed after the patentees have provided explanations for the notifications of the references used in technical evaluation reports of utility model patents, the IPO will not send further notifications to patentees unless the comparison basis has been changed, such as the cited references are different or the post-grant amendments are accepted. After the modified measures, if claims which do not pass the first evaluation still do not pass the follow-up evaluation (e.g.e02), the IPO will send notification of the references used in technical evaluation reports to the patentees, requesting further explanations.
The modified measures for presenting technical evaluation reports of utility model patents give rights holders of utility model patents more opportunity to sufficiently provide needed explanations. Thus, the modified measures are advantageous to rights holders of utility model patents to maintain their utility model patent rights.