[Taiwan] Introduction to the Dual Application of Invention and Utility Model Patents
[ January 22, 2025 ] >Back|
What is Dual Application of Invention and Utility Model Patents?
According to Article 32 of Taiwan’s Patent Act, an applicant is allowed to file, on the same day, an invention application and a utility model application for the same creation/invention, with a "Dual filing Statement" in both applications. Key Features of the Dual Application System:
1. Utility Model First Utility models are subject to formality examination only, making them faster to grant, typically within about 6 months after the formalities are completed. 2. Subsequent Decision for the Applicant If the invention application is deemed allowable, the Taiwan Intellectual Property Office (TIPO) will notify the applicant to select one of the two - utility model or invention - and abandon the other within a specified period. Thus, the approved invention can continue the patent right initiated by the utility model.  This system offers several benefits, enabling applicants to maximize patent protection while maintaining strategic flexibility.
Requirements for Dual Application
1. Same creation/invention At least one claim in the invention application must be identical to at least one claim in the utility model application. 2. Same applicant
The applicant for both the invention and utility model applications must be exactly the same. 3. Same filing date Both the invention and utility model applications must have the same filing date. 4. Dual Filing Statement
Both the invention and utility model applications must explicitly include the “dual filing statement” in the application forms, stating that the same creation/invention is being applied for on the same day. If the applicant fails to include the “dual filing statement” in either application, it cannot be submitted or requested later. 5. Validity of the utility model
Before the grant of invention is published, the utility model patent right must remain in valid. If the utility model is lapsed or revoked with finality before the invention is granted, the invention application will not be allowed. Scenarios for Utility Model Invalidity:
♦ Lapsed - The utility model lapses due to non-payment of the annuity fee beyond the 6-month grace period without successful reinstatement. ♦Revoked - The utility model is revoked due to a successful invalidation action, and either no administrative remedy is pursued, or such remedy is ultimately dismissed. Selection Process & Legal Effect
Utility models undergo only a formality examination, enabling them to be granted more quickly, usually first. Once the invention application is allowable, the Taiwan Intellectual Property Office (TIPO) will notify the applicant to select one of the following options to avoid double patenting: (1) Retain the utility model and abandon the invention application
(2) Select the invention application for grant and abandon the utility model
♦ If the applicant chooses the invention, the utility model must stay valid until the grant of invention is published. ♦ Once the invention is granted, the utility model is extinguished as of the publication date of the invention. Advantages of Dual Application
1. Accelerated Patent Protection The applicant can obtain utility model rights within approximately 6 months due to formality examination. 2. Early Acquisition and Extended Protection
Utility model rights remain enforceable until the grant of invention is published, offering early protection and extending the overall patent duration to up to 20 years. During this period, applicants can exercise patent rights, ensuring stronger and continuous protection. 3. Strategic Flexibility
Applicants can adapt their strategy to business needs, choosing to retain the utility model, switch to the invention, or maintain both temporarily, offering greater commercial adaptability. 4. Strengthened Patent
The invention’s substantive examination serves as an effective validity check on the utility model, enhancing future patent enforcement and reliability. For detailed information on Dual Application, please feel free to contact us via email (jawhwa@jaw-hwa.com.tw). |