A utility model patent application filed in Taiwan can undergo a formality examination without a patentability examination. Once the formality requirements under the Patent Act are met, the Taiwan Intellectual Property Office (TIPO) can approve the application. However, the examination process to assess the patentability of a utility model is not substantive, so there is often considerable uncertainty and a lack of clarity with regard to a patent’s validity.
If a patentee unfairly takes advantage of this uncertainty, the underlying patent rights may be abused, which can hinder the R&D of the third party. Therefore, anyone can request that the TIPO provide a technical evaluation report to clarify whether a utility model patent complies with the patentability requirements. Patentees can then present this report as a warning to potential infringers when exercising a utility model patent.
However, this technical evaluation report can be used as a reference for exercising the right to a utility model patent and is a technical reference only. Any party that wishes to oppose the approval of a utility model patent must institute an invalidation action in order to revoke it. To highlight the importance of a technical evaluation report, patentees can be held liable for damages suffered by another party due to the patentee’s exercise of the utility model patent right prior to its revocation. However, if this process is based on the report and carried out with due care, the patentee will not be liable for damages. In addition, a patentee cannot file an administrative remedy action based on an unfavourable technical evaluation report.
Should the TIPO find that a technical evaluation report is unfavourable for all patent claims (ie, all of the patent claims lack novelty and/or inventive step based on the cited references in the report), it will issue a notice of cited references to the patentee to give it an opportunity to submit a detailed explanation of the patent claims before the technical evaluation report is produced. The patentee has approximately one month to reply to the notice. The TIPO will produce the report if the patentee fails to respond to the notice within the required time limit. The TIPO will not issue another technical evaluation report unless the comparison basis for evaluating the patentability of patent claims has changed (eg, a change to the cited references or an amendment of patent claims is made and approved).
On 11 June 2019 the TIPO announced a new measure for technical evaluation reports for utility model patents. Under the new measure on receiving an unfavourable evaluation of patent claims, patentees will have the opportunity to provide a detailed explanation of the claims. Further, the TIPO will issue a notice of cited references to a patentee when a patent claim has been unfavourably evaluated to give the patentee the opportunity to submit an explanation before a technical evaluation report is produced. The TIPO will also issue a notice of cited references for any subsequent technical evaluation reports to the patentee if the amended patent claim receives an unfavourable evaluation based on the cited references. This gives the patentee a further opportunity to submit a detailed explanation of the patent claims.
The new measure was implemented on 1 July 2019. There have been more than 20,000 utility model patent applications and patents submitted in Taiwan annually for the past 10 years and the new measure will be beneficial to utility model applicants.
Yulan Kuo, Betty Chou
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