Filing a utility model application for an invention can be a quick way to obtain patent rights in Taiwan. A utility model application will mature into a registration with a duration of 10 years from the filing date as soon as the formality requirements are fulfilled. However, as a utility model application filed in Taiwan is not subject to a substantive examination looking at novelty and inventive step, before a utility model patent holder can enforce his right against an infringer, he needs to ask Taiwan's IP Office to produce a technical evaluation report in which prior art references are cited (if any) and the relevance of these to each claim is specified. The scope of the claims of a utility model patent might need to be restricted in light of the references cited by the IP Office.
According to current practice, a petition for amendment filed independently of an invalidation action is only subject to a formality examination. Taiwan's IP Office now adopts a different threshold from that of substantive examination. During a formality examination, the IP Office would generally consider a slight modification of the wording in the recitations of the claims to be a substantial change. This makes it quite difficult for the patent holder to obtain a favourable technical evaluation report when it comes to cited art.
Moreover, a utility model patent holder might need to submit a petition for claim amendment before the IP Office if he filed an infringement lawsuit and the accused infringer, in turn, filed a defence of patent invalidity as a countermeasure. In this case, the petition can be dismissed for failing the formality test even if the scope of the amended claims does not go beyond the originally filed claim or is narrower than the original claims.
To ensure the stability of utility model patent rights and to limit problems arising from filing claim amendments during a civil litigation procedure or application for a utility model technical evaluation report, both of which are subject to a formality examination, the IP Office is about to revise relevant regulations. It proposes prohibiting the filing of petitions for amendment of the claims of utility model patents in the absence of an invalidation action, an application for a technical evaluation report or a pending civil litigation case. Moreover, amendments to the claims of utility model patents shall be examined substantively. In the hope of establishing a sound claim amendment system for utility model patents, the IP Office is ready to revise patent law if a consensus can be reached at the forthcoming public hearings.
Yen-bin Gu |
Saint Island International Patent & Law Offices7th Floor, No. 248, Section 3Nanking East RoadTaipei 105-45, Taiwan, ROCTel: +886 2 2775 1823Fax: +886 2 2731 6377siiplo@mail.saint-island.com.twwww.saint-island.com.tw
