Filing a utility model application for an invention can be a speedy option to obtain patent rights in Taiwan. A utility model application will mature into a registration with a duration of ten years from the filing date as soon as the formality requirements are fulfilled. However, as a utility model application filed in this country is not subject to substantive examination as to novelty and inventive step, before a utility model patent holder can enforce his right against an infringer, he needs to request Taiwan’s IP Office to render a technical evaluation report in which prior art references are cited, if any, and the relevance thereof to each claim is specified. Under such circumstance, the scope of the claims of a utility model patent might need to be restricted in view of the references cited by the IP Office.
According to the current practice, a petition for amendment filed independently of an invalidation action is only subject to formality examination of which Taiwan’s IP Office now adopts a different threshold from that of substantive examination. During formality examination, the IP Office generally would deem a slight modification of the wordings in the recitations of the claims to be substantial change, which renders it to be quite difficult for the patent holder to obtain a favorable technical evaluation report in the presence of 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 defense of patent invalidity as a counter-measure. 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 disclosure of the specification as originally filed and is narrower than the scope of the original claims.
To ensure the stability of utility model patent rights and to curtail problems arising from filing claim amendments during a civil litigation procedure or application for a utility model technical evaluation report, both being subject to formality examination, the IP Office is about to revise relevant regulations. It is proposed to disallow filing of petitions for amendment of the claims of utility model patents in the absence of (i) an invalidation action; (ii) an application for a technical evaluation report; or (iii) a pending civil litigation case. Moreover, amendments to the claims of utility model patents shall be examined in terms of substantive matters. In the hope of establishing a sound claim amendment system for utility model patents, the IP Office is ready to revise the Patent Law if a consensus can be reached in the public hearings to be held.