Newsletter
TIPO Published Amendments Relating to the Technical Evaluation Report of Utility Model Patents to the Patent Examination Guidelines
In the existing Taiwan Patent Act, the application and legal effect of a technical evaluation report of utility model patents (hereinafter referred to as the "technical evaluation report") are expressly provided, for example:
Article 115 Paragraph 1, “After a patent application for utility model is published, any person may file a request with the Specific Patent Agency for a technical evaluation report of utility model patent.”; Article 116, “When exercising a utility model patent, the patentee shall not make a warning without presenting the technical evaluation report of utility model patent.”; Article 117, “Where a utility model patent is revoked, the patentee shall be liable for the damages suffered by another person due to the patentee’s exercise of utility model patent right 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.”
Nevertheless, few details about the application, content, and process of the technical evaluation report are provided in the existing Patent Examination Guidelines. To allow the applicants of technical evaluation reports to understand the relevant regulations and ensure a consistent practice for the patent examiners, the Taiwan Intellectual Property Office (TIPO) published the amendments relating to the technical evaluation report of utility model patent to the Patent Examination Guidelines on July 2, 2020, adding relevant regulations of technical evaluation reports. The effective date of the new Guidelines is August, 1 2020.
Two significant changes to the content and process of the technical evaluation report in the new Guidelines are provided as follows:
1. If the utility model patent in dispute is involved with a post-grant amendment, the technical evaluation report shall be made on the basis of the post-grant amended claim(s) after a decision on said post-grant amended claim(s) is rendered.
There is no doubt that the object to be compared with the prior art in the process of making the technical evaluation report is the utility model patent’s valid claim(s). However, if the utility model patent in dispute is involved with a post-grant amendment, it may be asked which version of the claim(s), before or after the post-grant amendment, shall be used by the TIPO. Under current practice, the TIPO adopts the claim(s) before the “post-grant amendment” so that the technical evaluation report can be made sooner. The examiner waits for a decision on the post-grant amendment only when the patentee expressly states that the post-grant amended claim(s) shall be adopted after an application for the technical evaluation report is filed.
In the new Guidelines, the TIPO adopts an approach opposite to current practice. That is, the IPO intends to await a decision on the post-grant amendment and then take the post-granted amended claim(s) as a basis for the technical evaluation report. Nevertheless, the new Guidelines retain some exceptions for conditions where the technical evaluation report may be made on the basis of the claim(s) before the “post-grant amendment.” For example, the pending cancellation action with which the utility model patent is involved is complicated; the applicant of the technical evaluation report is the patentee who claims that the utility model patent is commercially exploited by a party other than the patentee; or, the applicant of the technical evaluation report is a party other than the patentee and claims that they are involved in patent infringement concerning said utility model patent and submit facts and relevant document(s) as proof.
2. If the TIPO considers that the utility model patent in dispute has neither novelty nor an inventive step, the patentee shall be given the opportunity to respond.
Under current practice, since the technical evaluation report is not an administrative disposition, the patentee of a utility model patent is usually not given an opportunity to respond before the technical evaluation report is made by the TIPO. Accordingly, when the conclusion of the technical evaluation report is not favorable to the patentee, remedy cannot be sought either through filing an administrative appeal or an administrative litigation. Therefore, the patentee’s procedural and substantive rights are not well protected.
In order to protect the patentee’s rights to provide opinions and participate in proceedings, a new mechanism, "Notification of the References Cited in the Technical Evaluation Report," is introduced to the new Guidelines. When an examiner deems that any claim lacks novelty or and inventive step, he shall issue a notification to the patentee indiciating such along with cited documents. In particular, he has to highlight the relevant contents of the cited references and ask the patentee to submit a response or provide supplementary documents. The patentee may also file a post-grant amendment. However, for time efficiency, a request for postponement of the submission of a response or an interview with the examiner would not be allowed under the new practice.