After undergoing a substantive examination conducted by the Taiwan Intellectual Property Office (hereinafter referred to as the TIPO), an invention patent application will be allowed by the TIPO pursuant to Article 47 of the Patent Act if the invention patent application complies with Article 46 of the Patent Act and will be issued an invention patent upon completion of a related procedure. After undergoing a formalities examination conducted by the TIPO, a utility model patent application will be allowed by the TIPO pursuant to Article 113 of the Patent Act if the utility model patent application complies with Article 112 of the Patent Act and will be issued a utility model patent upon completion of a related procedure.

After taking out an invention patent, the invention patentee can exercise the invention patent right to acquire royalties, monopolize a market, and be benefitted from a quasi advertisement effect. On the contrary, after taking out a utility model patent, the utility model patentee exercises the utility model patent right under the Patent Act, Article 116 which requires utility model patentees to submit autility model technical evaluation report. The Patent Act, Article 115-4 sets forth the rules of drafting utility model technical evaluation reports.

Nonetheless, the odds are that both invention patents and utility model patents whose technical evaluation reports are assigned with patentability-indicating number 6 are subject to invalidation requests, whose rationale is as follows: patent searches conducted by the TIPO are predisposed to dead space, and in consequence inventions which are not novel, constructive novel, or non-obvious are granted a patent.

Scenarios of a dead space in patent searches conducted during a substantive examination of an invention patent application and patent searches conducted in reference to utility model technical evaluation reports are as follows:

Scenario 1

 Patent applications are generally published 18 months after the day following the filing date. Patent searches conducted by the TIPO during a substantive examination cover all published and non-published invention patent applications, issued invention patents, issued utility model patents, utility model patent applications, and academic journals, each of which is hereinafter referred to as a “patent literature 1”.

Both Article 23 of the Patent Act and the current Patent Examination Guidelines, Part 2, Chapter 3, Section 2.6.2, Point 2 provide that the TIPO may reject an invention patent application pursuant to the Patent Act, Articles 46, 23 only after a patent literature 1 has been published.

After requesting the early publication of an invention patent application, its applicant must publish the invention patent application in three months from the filing date, and then the applicant may request that the published invention patent application be examined under the Accelerated Examination Program (AEP) or the Patent Prosecution Highway (PPH) Program. The Accelerated Examination Program (AEP) (Amended in 2014) stipulates that the TIPO is obligated to issue the result of a substantial examination in nine months after receiving complete application documents from an applicantof an invention patent application, but the aforesaid stipulation is abided by at the expense of the efficiency of substantial examination for the reason described below. During the substantive examination process, a patent search carried out by the TIPO may discover a patent literature 1 which has not yet been published, but both Article 23 of the Patent Act and the current Patent Examination Guidelines, Part 2, Chapter 3, Section 2.6.2, Point 2 provide that the TIPO may reject an invention patent application pursuant to the Patent Act, Articles 46, 23 only after a patent literature 1 has been published. As a result, odds are that the TIPO cannot not reject the invention patent application by the patent literature 1 but grants a patent to the applicant of the invention patent application, in nine months after receiving complete application documents from the applicant.

Scenario 2

An applicant files an invention patent application, and there is a non-professional document which discloses an art similar to the prior art of the invention claimed by the invention patent application. The non-professional document is herein defined as any document which discloses an art implemented openly but not widely or known well but not widely. Examples of the non-professional document include documents circulated but not readily accessible, such as catalogs published by small companies, and flyers, but exclude patent literature, academic journals, dissertations, and Webpages.

Although the TIPO is able to conduct thorough patent searches on patent literature, academic journals, dissertations, and Webpages, the TIPO is unable to conduct thorough patent searches on the aforesaid non-professional documents – dead spaces. As a result, odds are that the TIPO fails to discover the aforesaid non-professional documents by patent searches and thus allows invention patent applications.

Scenario 3

An applicant requests for a utility model technical evaluation report with respect toa utility model patent, and there is a patent literature 1 which is an invention patent. Basically, the patent literature 1 must be published 18 months after the day following the filing date.

In general, utility model patents are issued within six months from the filing date, whereas utility model technical evaluation reports are issued within nine months from the request date.

Question 6 in FAQs about Utility Model Technical Evaluation Reports, published by the TIPO, is: what are the differences in evaluation of the patentability of an invention between a utility model technical evaluation report and a substantive examination? Point 5 of the answers to Question 6 is interpreted as follows: it is possible that during the drafting process of a utility model technical evaluation report the TIPO discovers an invention patent application (such as the aforesaid patent literature) which has not yet been published but is capable of causing constructive loss of novelty to the utility model patent and thus the TIPO does not include the non-published patent application in the results of a patent search conducted by the TIPO, but the TIPO decides to finish drafting the utility model technical evaluation report without waiting for the publication of the discovered invention patent application with a view to ensuring that the utility model technical evaluation report is timely finished.

As a result, as long as the patent literature 1 has not yet been published, the TIPO is likely to give a high rather than low score, say 6, to autility model technical evaluation report.

Scenario 4

An applicant requests for a utility model technical evaluation report with respect to a utility model patent, and there is a non-professional document which discloses an art similar to the prior art of the invention claimed by the invention patent application. The non-professional document is herein defined as any document which discloses an art implemented openly but not widely or known well but not widely. Examples of the non-professional document include documents circulated but not readily accessible, such as catalogs published by small companies, and flyers, but exclude patent literature, academic journals, dissertations, and Webpages.

Although the TIPO is able to conduct thorough patent searches on patent literature, academic journals, dissertations, and Webpages, the TIPO is unable to conduct thorough patent searches on the aforesaid non-professional documents – dead spaces. As a result, the TIPO is likely to give a high rather than low score, say 6, to a utility model technical evaluation report.

Impact on Patentee

Both an invention patent issued in whatever ways described above and a highly scored utility model technical evaluation report are liable to an invalidation complaint filed by a third party, and in consequence the invention patent and the utility model patent are annulled.

After being issued an invention patent, an invention patentee may undertake patent licensing or patent pledging. After receiving a final and conclusive judgment of invalidation, the invention patentee only needs to return the profits made by patent licensing or patent pledging but is not held liable to damages.

After being issued a utility model patent, a utility model patentee, who exercises due diligence in undertaking patent licensing or patent pledging pursuant to Article 117 of the Patent Act and according to a utility model technical evaluation report, only needs to return the profits made by patent licensing or patent pledging but is not held liable to damages, after receiving a final and conclusive judgment of invalidation.

Furthermore, the invention patentee and the utility model patentee not only waste money and time filing the patent applications, but the patentees’ reputation and goodwill also suffer.

To preclude the aforesaid problems, the Giant Group is of the opinion that patentees holding invention patents or utility model patents must conduct thorough patent searches (on all data attributable to the art pertaining to the inventions or utility models and likely to have been published) in 18 months or more from the day following the filing dates of the invention patents or utility model patents before undertaking patent licensing or patent pledging, so as to ensure that the invention patents or utility model patents are completely valid.

 

References:

1. MOEA/TIPO (2014): Invention Patent Fast-track Examination Scheme (Year 2014), amended and promulgated on January 1, 2014.

2. MOEA/TIPO (2014): Statistics for PPH Examination (July through December, 2013), April 14, 2014, http://www.tipo.gov.tw/public/Data/412814322671.pdf

3. MOEA/TIPO (2014): utility model technical evaluation reports, FAQs, effective as of June 13, 2013.