Pursuant to Article 32 of Taiwan Patent Act, an applicant may file both an invention patent application and a utility model patent application for the same invention on the same date. The Taiwan Intellectual Property Office (hereinafter referred to as "the TIPO") will notify the applicant who adopts this double-application system, to select either the invention patent or utility model patent before approving the invention patent. If the applicant chooses the invention patent, the previously granted utility model patent right (a utility model application is subject to only formality examination and thus, is usually granted very soon) shall become extinguished on the publication date of the allowed invention patent. The invention patent right will continue seamlessly to exist right after the utility model patent right becomes extinguished. Under patent practices, applicants use this double-application system mainly because they could obtain utility patent rights as early as possible, and subsequently transfer to invention patent rights with a longer protection period. However, when it comes to actual exercise of the invention patent rights such as in a patent infringement action, for the purpose of claim construction, should the file history of not only the invention patent application but also the utility model patent application be considered? In November of 2023, the Intellectual Property and Commercial Court (hereinafter referred to as "the IPC Court") clearly adopted an affirmative view in its decision: No. 2023 Civil Patent Suit 22, November 2023.
The technology of this double-application invention is directed to the structure of a drainage device. The plaintiff (the patentee) simultaneously filed for an invention patent and a utility model patent with the TIPO on October 11, 2016. The TIPO granted and published the utility model patent (No. M538114, hereinafter referred to as "the related utility model patent") and the invention patent (No. I614443, hereinafter referred to as "the invention patent in suit") on March 11, 2017 and February 11, 2018, respectively. Because the plaintiff selected the invention patent in suit, the related utility model patent right was thus extinguished. Thereafter, the plaintiff filed a suit against the defendant for infringement of the invention patent in January of 2023. The main issue of the suit turned out to be how the claimed limitations of “first positioning portion” and the “second positioning portion” of the drainage device of the invention patent in suit should be construed.
According to the reasoning of the decision, the court's interpretation was not only based on the plaintiff’s response during application for the invention patent in suit, but also the plaintiff’s response in invalidation proceedings of the related utility model patent (said invalidation action was filed by a third party in November 2017 and was dismissed by the TIPO in April 2018). The plaintiff did not argue that the response during the application for the invention patent in suit could be considered as the intrinsic evidence for claim construction, yet denied the same in its response in invalidation proceedings of the related utility model patent. The court held that before granting the invention patent in suit, the TIPO had indicated that the plaintiff’s related utility model patent and the invention patent in suit were for the same invention, and requested the plaintiff to make a selection. The court determined that the claim scopes of the two related patents had the identical elements of "first positioning portion” and “second positioning portion”. The court cited the "Patent Infringement Assessment Guidelines" (hereinafter referred to as "the Guidelines"), which stipulates that the same terminology in a "related patent case" should, in principle, be construed in the consistent way or with the same meaning. Since the drawings and description of the related utility model patent and the invention patent in suit are the same, the plaintiff’s two patents should be considered to be related patents, and the plaintiff's counter-response in the invalidation proceedings of the related utility model patent could be used as a basis for the construction of the invention patent in suit. The court finally made an interpretation unfavorable to the plaintiff based on the file wrappers of both the application for the invention patent in suit and invalidation proceedings of the related utility model patent, and held that the defendant's product did not constitute patent infringement.
According to the Guidelines, the intrinsic evidence for claim construction includes not only description, claims, drawings, and file history of the asserted patent case, but also its “related cases” (e.g. original application of a divisional patent application, priority basis application, and corresponding foreign application) and the file wrappers of said related cases. In this decision, the court affirmed that the utility model patent and the invention patent for one invention are the “related cases” or “related patent cases” as described in the Guidelines, and the file wrappers of both the related utility model and invention patents, such as the responses during the application and in the invalidation proceedings, can be cross-referenced as the basis for the claim construction of each patent. Therefore, when a patentee simultaneously applies for the invention patent and utility model patent for one invention, the patentee should pay attention to the possible impact of the file wrappers provided during the application or in the invalidation proceedings which may give rise to and influence the interpretation of claim construction of the related patent(s) in future enforcement.