JURISDICTION REPORT: TAIWAN
UTILITY MODELS UNDER THE NEW PATENT ACT
Crystal J. Chen and Candy K.Y. Chen Tsai Lee & Chen
Utility model patents, along with invention and design patents, are three kinds of patent rights protected under the Taiwan Patent Act. Since the soon-to-be enacted new act involves an overhaul of the stipulations related to utility models, various aspects of utility model protection in Taiwan are explored in the following questions and answers.
What kinds of inventions are protectable by a utility model? A utility model refers to a creation of technical ideas that is related to the shape or structure of an article, or to the combination of articles that possesses a new purpose or improved efficacy, in which the creation or combination is realised by using the laws of nature.
A utility model cannot protect a creation that is not directed to the shape or structure of an article, or a combination of articles. For example, a process or a composition patent can only be protected as an invention, rather than a utility model.
Is substantive examination conducted before the application is allowed? Only a formality examination will be conducted for a utility model patent application. However, a utility model patent application may be rejected for any of the following reasons:
• Te description, claims and drawings do not conform to the written description requirements;
• Te utility model patent application does not conform to the unity of invention requirement;
• Te description, claims and drawings fail to disclose essential matter or are obviously unclear. Tis refers to obvious flaws that can be identified during a formality examination; and/or
• An amendment for the utility model application obviously extends beyond the scope of the description, claims or drawings as filed.
Are divisional applications permissible for a utility model application? If a utility model patent application contains two or more utility models, the application may, upon notice given by the patent examiner or upon request by the applicant, be divided into two or more divisional applications.
The divisional applications should be filed before a decision for grant or rejection is made.
How long does it take from the filing of a utility model application to its grant?
A utility model patent can be granted within six months aſter filing.
“AN INVENTION OR DESIGN PATENT APPLICATION MAY BE CONVERTED INTO A UTILITY MODEL APPLICATION, AND A UTILITY MODEL PATENT APPLICATION MAY BE CONVERTED INTO AN INVENTION OR DESIGN APPLICATION.”
What is the term of protection for a utility model? Te term of a utility model patent is 10 years from the filing date of the application.
Is it possible to convert an invention or design patent application into a utility model application, or vice versa?
An invention or design patent application may be converted into a utility model application, and a utility model patent application may be converted into an invention or design application, all within a statutory time limit but before the decision of grant for the original patent application has been served.
Is it possible to secure a utility model application via the Patent Cooperation Treaty (PCT) system? If yes, is it possible to enter the PCT national phase with applications for both an invention and a utility model?
Taiwan is not a PCT member country so it is not possible to file any patent application through the PCT route. However, Taiwan accepts any patent application, including an invention application and a utility model application, which claims priority from a corresponding PCT application.
Applicants can file both invention and utility model applications at the same time for the same innovation. Both applications may claim priority to the PCT application.
Te benefit of filing both invention and utility model applications at the same time is that applicants may obtain earlier utility model protection. However, if the invention patent is subsequently granted, the applicant will be required to elect one of the two granted rights. If the applicant decides to keep the invention patent, upon election of the invention patent, the utility model will be considered never to have existed.
Candy K.Y. Chen is a patent attorney and partner at Tsai Lee & Chen, She can be contacted at:
ckchen@tsailee.com.tw
Crystal J. Chen is an attorney at law and partner at Tsai Lee & Chen. She can be contacted at:
cjchen@tsailee.com.tw
114 World Intellectual Property Review September/October 2012
www.worldipreview.com
Page 1 |
Page 2 |
Page 3 |
Page 4 |
Page 5 |
Page 6 |
Page 7 |
Page 8 |
Page 9 |
Page 10 |
Page 11 |
Page 12 |
Page 13 |
Page 14 |
Page 15 |
Page 16 |
Page 17 |
Page 18 |
Page 19 |
Page 20 |
Page 21 |
Page 22 |
Page 23 |
Page 24 |
Page 25 |
Page 26 |
Page 27 |
Page 28 |
Page 29 |
Page 30 |
Page 31 |
Page 32 |
Page 33 |
Page 34 |
Page 35 |
Page 36 |
Page 37 |
Page 38 |
Page 39 |
Page 40 |
Page 41 |
Page 42 |
Page 43 |
Page 44 |
Page 45 |
Page 46 |
Page 47 |
Page 48 |
Page 49 |
Page 50 |
Page 51 |
Page 52 |
Page 53 |
Page 54 |
Page 55 |
Page 56 |
Page 57 |
Page 58 |
Page 59 |
Page 60 |
Page 61 |
Page 62 |
Page 63 |
Page 64 |
Page 65 |
Page 66 |
Page 67 |
Page 68 |
Page 69 |
Page 70 |
Page 71 |
Page 72 |
Page 73 |
Page 74 |
Page 75 |
Page 76 |
Page 77 |
Page 78 |
Page 79 |
Page 80 |
Page 81 |
Page 82 |
Page 83 |
Page 84 |
Page 85 |
Page 86 |
Page 87 |
Page 88 |
Page 89 |
Page 90 |
Page 91 |
Page 92 |
Page 93 |
Page 94 |
Page 95 |
Page 96 |
Page 97 |
Page 98 |
Page 99 |
Page 100 |
Page 101 |
Page 102 |
Page 103 |
Page 104 |
Page 105 |
Page 106 |
Page 107 |
Page 108 |
Page 109 |
Page 110 |
Page 111 |
Page 112 |
Page 113 |
Page 114 |
Page 115 |
Page 116 |
Page 117 |
Page 118 |
Page 119 |
Page 120 |
Page 121 |
Page 122 |
Page 123 |
Page 124 |
Page 125 |
Page 126 |
Page 127 |
Page 128