For the amended Articles 32, 41, 97, 116 and 159 of the Patent Act effective on June 13, 2013, the TIPO held a seminar on June 19, 2013 to discuss the applicability of the amended Articles of the Patent Act. We herewith list the main points of the conclusions mentioned in the seminar as follows:
Concerning the amended Article 32:
One creation applied for invention patent and utility model patent
Where an applicant files an invention patent application and a utility model patent application for the same creation on the same date, the applicant shall make a declaration with respect to this matter respectively when filing either patent application. If the utility model patent application has been granted before a decision of admission is issued on the invention patent application, the Specific Patent Agency shall notify the applicant to select one patent application within a specified time limit. The invention patent application shall not be granted if the applicant fails to make such a declaration when filing or make the selection within the specified time limit.
Where the applicant selects the invention patent application according to the provision set forth in the preceding paragraph, the utility model patent right shall be deemed non-existent ab initio extinguished from the date of publication of the invention patent application.
The invention patent application shall not be granted if the utility model patent right has extinguished or has been invalidated before a decision is issued on the invention patent application.
1. The amended article requires that an applicant shall make a declaration about the matter of filing an invention patent and a utility model patent for the same creation on the same date in both application forms respectively when filing. Since the amended Article 32 was effective on June 13, 2013, it is only applicable to those new patent and utility model applications filed on or after June 13, 2013.
2. When the TIPO deems that the applications meet the official requirements of one creation applied for invention patent and utility model patent and do not have the condition mentioned in the Article 32.III (The invention patent application shall not be granted if the utility model patent right has extinguished or has been invalidated before a decision is issued on the invention patent application), the TIPO will issue an official notice to require the applicant to select one patent application within a specified time limit before the Invention application is granted. If the applicant selects the Invention patent, the TIPO will issue a Notice of Allowance and the applicant shall pay the Issue Fee and the 1st annuity in due course. After the applicant pays the fees, the utility model patent right shall be deemed extinguished from the date of publication of the invention patent application. However, if the utility model patent right has extinguished or has been invalidated (that is, the application has the condition mentioned in the Article 32.III) when the invention patent application is ready to be published by the TIPO, the invention patent application shall not be published.
3. When the annuity of a utility model patent is not paid in due course but still within the grace period of six months after the official due date, the utility model patent right has not extinguished yet. So, the application is not applicable to the condition of the Article 32.III. However, if the applicant does not pay the annuity before the six-month grace period and does not file a request to restore the utility model patent, either, when the corresponding Invention patent application is granted, it is applicable to the condition of the Article 32.III and the Invention application shall not be granted. Alternatively, if the utility model patent is allowed to be restored while the corresponding Invention patent application is granted after going through the examination or re-examination, the TIPO will require the applicant to select one patent according to the Article 32.I.
Source: TIPO Newsletter, Issue No. 86, Date: August 5, 2013 (http://www.tipo.gov.tw/public/epaper/113/ePaper113_ep7528.htm)
Delivered by: JAW-HWA INTERNATIONAL PATENT & TRADEMARK & LAWOFFICES
TAIPEI, TAIWAN
http://www.jaw-hwa.com.tw
