Filing a utility model application could be a speedy option to obtain patent rights in Taiwan since a utility model application is not subject to substantive examination as to novelty and inventive step and will mature into a registration as soon as the formalities are fulfilled. However, a utility model patent cannot afford presumption of validity, and hence, a patentee, before enforcing his right against an alleged infringer, will need to request the IP Office to conduct substantive examination and to, in turn, render a technical evaluation report in which prior art references are cited, if any, and the relevance thereof to each claim is specified.
In view of the critical role played by a technical evaluation report in the enforcement of utility model patent rights, the IP Office carried out an overhaul of the utility model patent examination benchmark by incorporating therein a number of tangible rules. The purpose is to generate a more complete coverage for the sake of the interest of the public and the patentee as well.
In a nutshell, the Revision, taking effect since August 1, 2020, has relaxed the conditions under which the patentee is allowed to express his opinion regarding a technical evaluation report by filing a response. It also provides that a technical evaluation report should not be rendered pending the examination results of a Claim Amendment, regardless of whether or not the Claims were revised to stay away from the prior art references cited in an Invalidation Action.
As a general rule, a technical evaluation report against the validity of a utility model patent would be rendered in any of the following circumstances:
- The invention claimed in the utility model patent had been disclosed in a printed publication prior to filing.
- Any of the claims is found to be destitute of inventive step in view of a prior art reference(s) published prior to filing.
- The invention claimed in the utility model patent is disclosed in an invention or utility model application filed earlier but published later than the filing date of the utility model patent.
- An application for an identical invention had been filed prior to the effective filing date of the invention concerned.
- An application for an identical invention carries an effective filing date the same as the invention concerned.
In the past, the patentee would be given a chance to file a response to a technical evaluation report only under circumstances 1, 2 or 3. The Revision provides that the IP Office should designate a non-extendable deadline for the patentee to file a response (no interview is permitted) if any of circumstances 1-5 occurs. Moreover, even if a technical evaluation report against the validity of a utility model patent has been rendered, the IP Office should still make it known to the patentee the contents of a further unfavorable technical evaluation report rendered in response to a second application for obtaining a technical evaluation report.
The claims of a utility model patent can be amended when an application for obtaining a technical evaluation report has been filed or if there is a pending invalidation action or civil litigation case. In the past, the claims that were examined with cross-reference to the prior art references by the Examiner in issuing a technical evaluation report were those published most recently even if a Claim Amendment had been filed and was being examined. The Revision provides that a technical evaluation report shall in no event be rendered pending the examination results of a Claim Amendment, except that the patentee or the technical evaluation report applicant avers that there is an urgent need of a report drafted based on the published pre-revised claims, such as, the invention is being illegally exercised or a patent dispute can arise at any time.
One other matter which merits mentioning is that, in the past, in case an invention claimed in a utility model patent is not fully or clearly disclosed in the specification or the recitations of the claims are not clear, the Examiner would not proceed to conduct a prior art search or make a comparison between the invention and the prior art. In this aspect, the Revision provides otherwise, suggesting that the Examiner may conduct a search and a comparison and render his opinion regarding the validity of a utility model patent; however, a specific remark should be made in the technical evaluation report that the examination results were generated based on the Examiner’s personal understanding of the invention from the piecemeal information provided in the specification and the general knowledge available at the time the invention concerned was filed.