In Taiwan, an invention for an article or device may be protected by either an invention patent or a utility model patent. The term of an invention patent is 20 years, but substantive examination may take 1.5 to 3 years. Although the term of a utility model patent is 10 years, since substantive examination is not conducted, a utility model patent generally may be obtained within 4 to 6 months of filing. Therefore, some applicants employ the strategy of filing invention and utility model patent applications for the same invention on the same day.
According to Article 32 of the new Patent Law to be implemented in December of this year, where an applicant files both an invention patent application and a utility model patent application for the same invention on the same day, if the utility model patent is granted prior to allowance of the invention patent application, the TIPO will ask the applicant to make a choice. If the applicant chooses to have the invention patent issue, the utility model patent will be nullified ab initio. If the applicant chooses to retain the utility model patent, the pending invention patent application will be dismissed. However, if the utility model patent lapsed due to failure to pay annuities or was revoked prior to allowance of the invention patent application, the invention patent application will be dismissed.
Under the new law, for invention and utility model patent applications filed for the same invention, the applicant can defer making a decision as to whether or not to give up the utility model patent until he is assured of the allowance of the invention patent application.
According to the opinion of a majority of judges attending a seminar on intellectual property rights in June, 2009, a decision in favor of a patentee suing for infringement of a patent may be revoked via a review of the decision if the patent is later invalidated in an administrative action. In view of such opinion, if the above filing strategy is adopted, in case a utility model patent based upon which a favorable decision is rendered in an infringement lawsuit is nullified ab initio as a result of the patentee’s choice to have an invention patent issue instead, the decision may be put under review. Therefore, the patentee will have to face the dilemma of whether to give up the favorable decision based on the utility model patent for an invention patent or to give up the invention patent after obtaining the favorable decision.