In Taiwan, utility model patent applications are subject to only a preliminary examination on formalities with a view to issuing patents to the applicants as soon as possible. With utility model patent applications being not subject to substantive examination, utility model patents always go with uncertainties. To prevent utility model patentee from abusing the utility model patents in their possession, the Patent Act, Article 116 provides: when exercising a utility model patent, the patentee shall not make a warning without presenting the technical evaluation report of the utility model patent. Hence, under Article 116 of the Patent Act, to make a warning according to a utility model patent, a utility model patentee must present a technical evaluation report of the utility model patent so as to provide an objective benchmark by which the validity of the utility model patent is evaluated.
What is a technical evaluation report for utility model patent ?
After receiving a request for a technical evaluation report for utility model patent, a patent authority prepares the technical evaluation report by not only searching for documents which may be taken into consideration in deciding whether the utility model patent meets patentability requirements but also comparing each said document with the claims of the utility model patent. Technical evaluation reports for utility model patent are required when enforcing utility model rights, but are neither equivalent to administrative sanctions nor legally binding. Hence, after receiving a technical evaluation report to their disadvantage, technical evaluation report requesting parties are not entitled to any administrative remedies.
Who can request and when to request?Anyone can file a request with a patent authority for a technical evaluation report pertaining to a utility model patent issued by the patent authority, provided that the request is filed after the utility model patent has been issued. The Patent Act 115, paragraph 6 provides: request for a technical evaluation report of utility model patent can still be filed after the utility model patent has become extinguis
In principle, a technical evaluation report for utility model patent tells what happens to the utility model patent on the filing date. In case of a converted patent application and a divisional patent application, the filing dates of the utility model patent prior to the conversion and the division, respectively, shall prevail. If the utility model patent applicant claims priority to a foreign application, the technical evaluation report shall be about the utility model patent on the priority date.
The prior art targeted at by a technical evaluation report for utility model patent
The prior art with which a technical evaluation report compares a utility model patent includes domestic and foreign patents, publications, textbooks, catalogs, etc.
When it comes to the criterion “constructive loss of novelty” and the first-to-file doctrine, the prior art, with which a technical evaluation report compares a utility model patent, is restricted to: (1) domestic patents whose applications were filed on a date before the filing date of the utility model patent application, (2) domestic patent applications published after the filing of the utility model patent application but before the completion of the technical evaluation report for utility model patent, and (3) domestic patents issued after the filing of the utility model patent application but before the completion of the technical evaluation report for utility model patent. That is to say, the aforesaid prior art excludes all unpublished domestic patent applications. When conducting substantial examinations on invention patent applications, Taiwanese patent examiners seldom turn a blind eye to those unpublished domestic patent applications which predispose the invention patent applications to constructive loss of novelty, but never hesitate to send an office action as soon as any of the invention patent applications is published.
Are technical evaluation reports made on the same utility model patent consistent?Yes and No. Report after report must reach a consistent conclusion on the same utility model patent, provided that the claims of the utility model patent remain unchanged. Conversely, if an allowed change is made to the claims of the utility model patent, the change may be reflected by an ensuing report on the utility model patent.
Numbers Included in Technical evaluation report for utility model patent.
Barring poorly described specification or claims, numbers are included in technical evaluation reports on utility model patents to indicate whether individual claims meet patentability requirements, and their definitions are as follows:
1: The utility model claimed by the claim does not have novelty over a document cited.
2: The utility model claimed by the claim does not involve an inventive step over a document cited.
3: The utility model claimed by the claim is disclosed in the specification, claims, or drawings of an invention or utility model patent application filed before, but published or allowed after, the filing of the patent application of the utility model claimed by the claim.
4: The utility model claimed by the claim is identical to an invention or utility model whose patent application is filed before the filing date of the patent application of the utility model claimed by the claim.
5: The utility model claimed by the claim is identical to an invention or utility model whose patent application is filed on the same day as the patent application of the utility model claimed by the claim is.
6: No prior art is identified.
Exercising Utility Model Patent
To prevent utility model patentees from exercising unduly or even abusing (for example, by sending warning letters indiscriminately) their utility model patents and thereby causing a loss to a third party, Article 116 of the Patent Act provides: when exercising a utility model patent, the patentee shall not make a warning without presenting the technical evaluation report of the utility model patent.
Article 117 of the Patent Act provides: Where a utility model patent is revoked, the patentee shall be liable for damages to another person due to the patentee's exercise of the utility model patent prior to its revocation. The above shall not apply if such exercise is based on the content of the technical evaluation report of utility model patent and carried out with due care. Hence, to be not liable for damages to another person, utility model patentees must do two things: exercise utility model patent with due care (for example, by seeking legal advice and expert advice), and never make a warning without presenting the required technical evaluation report.
After preparing a technical evaluation report on a utility model patent, a patent authority publishes it on the Webpage Taiwan Patent Search of TIPO, MOEA http://twpat.tipo.gov.tw
Conclusion
Utility model patent applications are usually filed with a view to taking utility model patents on products with short lifecycle or filed out of commercial considerations. To gain insight as to whether a utility model patent meets patentability requirements, anyone can file a request with a patent authority for a technical evaluation report pertaining to the utility model patent issued by the patent authority, provided that the request is filed after the utility model patent has been issued. Just because the number 1, 2, 3, 4 or 5 is assigned to a technical evaluation report on a utility model patent, it does not mean that the utility model patent is at risk of being invalidated. To invalidate the utility model patent, a third party must initiate a patent invalidation procedure.
Where a utility model patent is revoked, the patentee shall be liable for damages to a third party if the patentee exercises the utility model patent toward the third party prior to its revocation, without conforming with the technical evaluation report on the utility model patent, and without exercising due care. Under the Patent Act, when exercising a utility model patent, the patentee shall not make a warning without presenting the technical evaluation report of the utility model patent. Nonetheless, presenting a technical evaluation report on a utility model patent in order to make a warning is not a prerequisite to tort litigation; in other words, a plaintiff may initiate a patent invalidation procedure even if the plaintiff has never presented any technical evaluation report to the defendant.
References:
1.MOEA/TIPO – FAQs fortechnical evaluation report for utility model patent(http://www.tipo.gov.tw/lp.asp?ctNode=7097&CtUnit=3535&BaseDSD=7&mp=1)
2.MOEA/TIPO – Full Description of Amendments to the Patent Act (100)Visit MOEA/TIPO, Patent Act Amendment Column at
http://www.tipo.gov.tw/ct.asp?xItem=202969&CtNode=6704&mp=1
3.MOEA/TIPO – Table of Tracked Changes in Amendments to the Patent Act (102)
Visit MOEA/TIPO, Laws & Regulations at
http://www.tipo.gov.tw/ct.asp?xItem=454892&ctNode=7452&mp=1
4.Jinkuan, Wang, Utility Model Patent Application Practice (a textbook used at Taiwan Intellectual Property Training Academy)