Taiwan – New Measures for Technical Evaluation Report for Utility Model Patent

utility model patentTIPO has revised the measures for technical evaluation report for utility model patent to provide more sufficient opportunities for the patentee to file a response to explain the technical features of the utility model patent in conditions of unfavorable technical evaluations.

The main modifications are briefly introduced below:

1. Before the modification, when a technical evaluation report for a utility model patent is requested, only when all claims are deemed to lack novelty or inventive step (comparison result codes 1~3) will TIPO issue a “Notice of Citation of Technical Evaluation Report” for the patentee of the utility model to file a response. In order to provide the patentee with a complete opportunity to explain before the issuance of the result of the technical evaluation report, it is now modified that as long as any of the claims is deemed to lack novelty or inventive step, a “Notice of Citation of Technical Evaluation Report” will be issued for the patentee to make a response. This new regulation provides the patentee with opportunities to submit further technical explanations for any of the claims with unfavorable technical evaluations.

2. Before the modification, if TIPO has already issued a technical evaluation report for a utility model patent and it is requested for a second technical evaluation report for the same utility model patent, TIPO would not issue a “Notice of Citation of Technical Evaluation Report” for the patentee of the utility model to file a response for the second time unless there are different citations or there are post-grant amendments to the utility model patent. After the modification, for the claims that receive unfavorable results in the first technical evaluation report (e01), if these claims are still evaluated as lacking patentability in the second technical evaluation report (e02), TIPO will issue another “Notice of Citation of Technical Evaluation Report” for the patentee of the utility model to file a response to further explain the technical features. This new regulation provides the patentee with opportunities to sufficiently express and explain the technical features and thus can further ensure the accuracy of the technical evaluation report for the utility model patent.

Delivered by: Sandy WANG (Ms.) / Senior Partner
JAW-HWA INTERNATIONAL PATENT &
TRADEMARK & LAW OFFICES
10-1A Fl., No. 23, Sec. 1, Chang-An E. Rd.,
Taipei, Taiwan, R.O.C.
Tel.: +886 2 2531-0876 Ext. 172
Fax: +886 2 2581-2761
www.jaw-hwa.com.tw