The Taiwan Intellectual Property Office (hereinafter referred to as "TIPO") released the improved measures on Notification and Instruction Guideline of Technical Evaluation Report for Utility Model Patent (hereinafter "Guideline") on June 11, 2019, which will take effect on July 1, 2019. Comparing to the current Guideline, the improved measures will give the patentee of utility model patent (hereinafter referred to as "Patentee") more opportunities to express his opinions, while TIPO issues the Technical Evaluation Report. Moreover, it is noteworthy that after the amendments to the Patent Act are implemented, Patentee will have a better chance to amend the claims in accordance with the evaluation of validity from the patent examiner.
Based on the current Guideline, TIPO will accept and process the Technical Evaluation Report, and inform Patentee with a "Notice of Prior Art Cited in Technical Evaluation Report for Utility Model Patent" (hereinafter referred to as "Notice") when TIPO opines that all claims of his utility model patent lack novelty and/or non-obviousness. Patentee then can submit his response to TIPO upon his receipt of said Notice. However, should TIPO consider only part of the claims lack novelty or non-obviousness, TIPO would not send a Notice to Patentee, who would be forced to accept that part of his claims are evaluated as invalid after he receives the Technical Evaluation Report. As opposed to the current Guideline, under the improved measures, TIPO will send a Notice to Patentee when the examiner opines that any of the claims lacks novelty and/or non-obviousness, so that Patentee can respond accordingly.
Another difference is, based on the current Guideline, if the examiner discovers another application of the Technical Evaluation Report, TIPO would not send another Notice to inform Patentee again because Patentee has already responded to the previous Notice, unless the foundation of validity determination of the utility model patent has been changed, such as when the examiner cites another prior art, or the claims are approved to be amended. But, in the improved measure, the examiner will send another Notice to inform Patentee to explain to the claims that were evaluated as invalid in the prior Technical Evaluation Report, if the same claims are evaluated as invalid again. As a result, TIPO will continue to request Patentee to respond each time the Technical Evaluation Report shows an unfavorable result.
Further, the amendments to Patent Act on May 1, 2019, which are expected to become effective by the end of this year, broaden significantly the timing of filing amendment of the utility model patent. Under the amendment of Article 118, Patentee can apply to amend his utility model patent where the patent invalidation case is pending, the Technical Evaluation Report is under application, or the patent litigation is pending in the court, and TIPO will conduct substantive examination on the amendment. Therefore, once the improved measures of the Guideline go into effect, in conjunction with the implementation of the amendment to Article 118 of Patent Act, Patentee can file amendment, in addition to response, against the prior art that TIPO cited when Patentee receives the Notice for any claim, giving Patentee more chances to maintain the validity of his utility model patent.