Filing Invention and Utility Model Applications in Respect of Same Invention/Creation in Taiwan　　　　　　　　　　　　　　　　　　　　　　　　　　　　　　by Katlynn HUANG

Taiwan Utility Model Patent

Formality Examination

Since 2004, Taiwan Patent Act has been revised to adopt “Utility Model formality examination”, meaning that Utility Model (UM) applications would not go through substantial examination of patentability (utility, novelty and non-obviousness). It is the system in between substantial examination and registration system. The specification formality, unity requirements and statutory subject matter requirements etc. shall be still reviewed to comply with the Patent Act.

In general, a UM patent will be granted after 4 to 6 months from its application.

The enactment of formality examination system is to focus the examining resource mainly on Invention applications. Moreover, a UM patent is granted and published shortly after its application so that the public can be aware of the technology involved, not to invest redundant time and money to the same researches. Those short-life-cycle products may also benefit from the quick grant of UM patents.

On the other hand, without substantial examination, the UM patent rights are not stable. To exercise the UM patent rights, the technical evaluation reports shall be applied and presented for the purpose of warning. The regulations regarding UM are listed as follows:

Related Laws

Article 93 (UM subject matters):

The term “utility model” shall refer to any creation of technical concepts by utilizing the acts of nature, in respect of the form, construction or installation of an article.

Article 101, Paragraphs 2 and 3 (UM patent term):

A claimed utility model in a patent application shall be granted a utility patent right, effective from the date of publication thereof, and a patent certificate shall be issued thereto.

The duration of a utility model patent right shall be 10 years from the filing date of the patent application.

Article 104 (UM technical evaluation reports):

When exercising a utility model patent right, the patentee of that utility model right shall present the technical evaluation report regarding the utility model patent for the purpose of warning.

Article 105, Paragraph 1 (Pecuniary Compensation for Damage):

In case the patent right of a utility model is revoked, the patentee shall be liable for the damages sustained by any other persons from the exercising of such utility model right by said patentee prior to the revocation thereof.

The Same Invention

Pursuant to Paragraph 4 of Article 31, where an Invention and a UM applications are filed separately in respect of the same invention or creation, only the application filed first may be granted a patent. This is to avoid inappropriate extension of patent terms. After all, a patent shall become the public belonging after it expires.

According to the Criteria of Patent Examining Procedure, “the same invention or creation” refers to identical or literally equivalent claims of two applications, similar to “Statutory Double Patenting” in US patent system. In Taiwan, however, there is no restriction against Obvious-type Double Patenting. Accordingly, the applicants may apply upper-level/lower-level (similar to generic/specific) drafting techniques in order to obtain Invention and UM patents simultaneously.

In the case where one person files an Invention application first and, on a later day, files a UM application, he may obtain Invention and UM patents simultaneously 3 because the later UM application is only through formality examination.

Invention and UM Patent Rights and Protection

Figure 1 shows the prosecution stages and patent rights of Invention and UM.

Pursuant to Paragraph 2 of Article 51, for Invention, “[t]he granted patent rights shall being on the date of publication, and a patent certificate shall be issued thereto.” As illustrated in Fig. 1, an Invention patent right is effective from the date of publication, shown in red.

Before the enforcement, pursuant to Paragraph 1 of Article 40, “[w]here a person has received a written notification of the contents of an Invention patent application from the applicant thereof after laying-open of such patent application and continues to put the invention to practice for commercial purpose in the interim after such notification and prior to the publication, the applicant of the Invention patent application may, after the publication of his/her Invention patent application, make a claim against said person for an appropriate pecuniary compensation.”

This right is similar to the provisional right as described in 35 USC 154(d) of US patent. It is colored in yellow in Fig. 1. The provisional right is triggered only if the Invention patent is issued later. On a basis of the current schedule, it averagely takes 1.5 to 3 years to get an Invention patent granted after its application.

Pursuant to Paragraph 2 of Article 101, “[a] claimed utility model in a patent application shall be granted a utility model patent right, effective from the date of publication thereof, and a patent certificate shall be issued thereto.” In Fig. 1, the UM 4 patent right are colored in red. By the speedy grant, the UM patent right can provide the protection prior to Invention patent right. This is the reason why the applicants intend to obtain Invention and UM patents simultaneously.

Filing Invention and UM applications in Respect of the Same Invention/Creation

In consideration of harmonizing Invention and Utility Model rights and stabilizing the UM rights, Taiwan Patent Office recently considers to revise the Patent Act to allow the filing of Invention and UM applications simultaneously in respect of the same invention/creation.

The formality examination enables the applicants to obtain the UM patents shortly, while Invention patent rights are more stable through substantial examination. If filing Invention and UM in respect of the same invention/creation takes effect, the patent rights may be exercised earlier through UM patent rights, marked as “right extension” in Fig. 2. In this case, double patenting or inappropriate patent term extension shall be avoided.

This will also induce the conflict between the UM patent right and the Invention provisional right after its publication, marked as “right conflicts” in Fig. 2. The Taiwan Patent Office hosted several hearings to receive and consider the public opinions in this regard. Our office will keep a close eye on the status, and update the information in our following Newsletter if any progress.

It is available to file for Accelerated Examination of a patent application from January 01, 2009.

Taiwan Intellectual Property Office (TIPO) promulgated the Accelerated Examination Program which adopts the spirits of the PPH (Patent Prosecution Highway) in many countries but is looser in order to accelerate the examination of the increasing patent application for inventions. The TIPO plans to operate this program for one year. Whether to continue this program or not after one year will depend on the practical situation and effect.

As you know, in Taiwan, a patent application will not be examined unless a request of substantial examination is filed. After a request is filed, it usually takes more than two years for receiving the 1st official notice. In our recent communication with the TIPO, we learned that their schedule progress of the substantial examination in practice has just carried on the patent applications requesting substantial examination in 2004. Having this program, the patent applicant surely will enjoy an accelerated examination by actively providing the examiner with a corresponding invention which has already been granted to patent in a foreign country.

For your further understanding, we introduce the Accelerated Examination Program in detail below for your easy reference.

Occasions for the filing for Accelerated Examination of a patent application

It is available to file for accelerated examination if a patent application has requested substantial examination and received an official notice informing that the TIPO will start the substantial examination for the patent application.

It is also available to file for accelerated examination if a patent application has received and responded to an official action. Under this situation, in case the patent application has limited the claims according to the request of the official action already, please do not submit a granted corresponding patent in a foreign country with broader claims than those of the patent application in Taiwan.

Requirements for Requesting an Accelerated Examination

An application form for requesting an Accelerated Examination;

A copy of Notice of Allowance and claims to be or have been granted and published in a corresponding invention in a foreign country with Chinese translation;

If there are more than one corresponding granted patent in foreign countries, we suggest submitting the one which you think the most beneficial instead of submitting all of them if all of them obtain different extent of claims.

Comments to the differences between the claims of the patent application in Taiwan and the granted claims in a foreign country. If there is no difference, we only have to report “no difference” while filing for the accelerated examination. On the contrary, please point out and show us clearly the differences.

Other references, if any, such as patent search report, specification, the official action and response with brief Chinese translation of the granted corresponding invention in foreign countries, etc.

Procedures

The accelerated examination will begin once all requirements are satisfied.

As planed, the applicant could expect to receive the examination result, either the first office action or a notice of allowance, within SIX months from the date when all requirements are satisfied. However, it will still depend on the actual situation in due course, especially for some special fields of invention.

(Source: The TIPO’s Press Release published on December 31, 2008)

Since March 01, 2009, the TIPO will adopt some improvement measures as shown below in order to accelerate the completion of a technical revaluation report

After March 01, 2009, when applying for obtaining a technical revaluation report pertaining to the proposed utility model and simultaneously there is an application for making amendment(s) to the contents of the specification and drawings of the same utility model, the TIPO will complete the technical revaluation report on schedule without waiting for the completion of the amendment application. However, in case the applicant requested to make the technical revaluation report based on the amendments before March 01, 2009, the TIPO should still make the technical revaluation report after the amendment(s) is completed.

According to the current practice, the TIPO will request the applicant to make clarification/explanation whenever they find that “any” claim lacks the requirement of novelty or non-obviousness. After March 01, 2009, the TIPO will request the applicant’s clarification/explanation only when “all” claims lacks the requirement of novelty or non-obviousness.

In principle, the TIPO will not attach the patent literature cited in the technical revaluation report after March 01, 2009 due to the fact that it is not difficult to obtain the patent literature via Internet free. However, for an individual who does not appoint an attorney and when citing the patent literature which is difficult to be obtained and/or material which is not the patent literature, the TIPO shall still enclose a copy of the same to the applicant who applies for obtaining the technical revaluation report.

(Source: The TIPO’s Press Release published on January 23, 2009)

When a trademark is a composition of letters in foreign languages, whether two trademarks are similar shall depend on the overall impressions of the trademarks.

A judgment by Taipei High Administrative Court made for determining whether “DFC” is similar to “KFC” disclosed this viewpoint.

For trademarks in alphabet-based foreign languages, the initial usually has substantial effect on the impression of the entire trademark conveyed to consumers. Hence, in judging trademark similarity, the beginning of words is accentuated in comparison. In this case, although “DFC” and “KFC” contain the same letters “FC”, the appearance and sound pronunciation of the initials “D” and “K” give different impression to people.

In addition, a letter in foreign language can be an abbreviation of many words with diverse meanings. While “FC” means “fried chicken”, it may also mean “funny chick”. Another example is that “US” and “USSR” start with the same letters “US” but they still won’t cause confusion to people because they represent different country names.

Due to the special characters for alphabet-based foreign languages which is distinct from the Chinese language as mentioned above, in judging trademark similarity, it is necessary to consider the overall impressions of the trademarks but not only focus on their respective letters when the trademarks in dispute are trademarks in alphabet-based foreign languages.

(Source: The TIPO’s Newsletter No. 31 issued on January 5, 2009)

The new “Guideline for Examination of Distinctiveness of Trademark” has come into effect on January 1, 2009 to substitute for the former “Main Points for Examination of Distinctiveness of Trademarks” which has been abolished on the same day.

The TIPO started using the new “Guideline for Examination of Distinctiveness of Trademark” to take the place of the original “Main Points for Examination of Distinctiveness of Trademarks” since January 01, 2009. The new guideline contains broader scope including definitions for distinctiveness, criteria for establishing distinctiveness, and methods for gathering evidence of acquired distinctiveness during the examination and verification process.

Before finalizing the draft of the new guidelines, the TIPO formally held three public audiences to widely receive comments from the public to the drafted guidelines, so the new guidelines would enable to help establish a clear, unified concept of trademark distinctiveness and provide more detailed criteria for examiners in determining distinctiveness.

(Source: The TIPO’s Press Release published on December 26, 2008)

Analysis and compilation of Well-known Trademarks in Taiwan within the past five years

The TIPO announced that they have finished collecting and compiling cases recognized as famous trademarks by all Courts, the Fair Trade Commission, Executive Yuan (FTC), TWNIC and the TIPO from 2003 to 2008 and published the same on TIPO’s web for reference:

http://www.tipo.gov.tw/ch/AllInOne_Show.aspx?path=3015&guid=5ea9e737-264b-49f0- be33-5afec5122b37〈=zh-tw.

Those cases which have never been involved in trademark disputes or litigations may be excluded in such compilation.

(Source: The TIPO’s Press Release published on February 04, 2009)