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According to article 32 of Taiwan’s Patent Law, an applicant is allowed to file, on the same day, an invention application and a utility model application for one and the same invention with a ‘dual filing’ statement specified in the application forms of the two applications.
Since a utility model application in Taiwan is not subject to substantive examination on novelty and inventive step, it will typically mature into a utility model patent in six months after completion of the formalities while the corresponding invention application is still pending.
Under such circumstance, in order to obviate the double-patenting issue, the applicant would be requested to make an election between the utility model patent and the invention patent application before the invention application is approved.
If the invention application is elected, the utility model patent will extinguish upon publication of the grant of the invention application. On the other hand, the invention application shall not be approved if, during its prosecution, the utility model patent has lapsed or been cancelled.
In addition, article 32 of Taiwan’s Patent Law endows the applicant with the right to enforce his/her utility model patent before the grant of the corresponding invention application. As this advantage afforded to the applicant can affect a third party’s interest and right, the Taiwan Intellectual Property Office (TIPO) has taken measures to make information with regard to such dual filings transparent and quickly known to the public so that any party will be able to timely file observations regarding the patentablity of the claimed invention, say, even before the laying-open of the invention application, in a bid to prompt rejection of the application.
In a recent public hearing, in response to the requests from some patent practitioners that the application number of a dual filing invention application be identified when announcing the grant of the corresponding utility model patent, TIPO made the following statement:
“It is not quite proper to have the application number of an invention application published before it goes into the substantive examination stage. Nonetheless, a note of dual filing, if any, is now annotated not only in the Patent Gazette announcement of the grant of a utility model application but also in the online Patent Search System.
“Since such notes are readily accessible to the public, any party may, by simply identifying the application or patent number of a dual filing utility model patent, submit to the TIPO for consideration and inclusion in the record (i) prior art references of potential relevance to the examination of the corresponding invention application; and (ii) his/her observations on the patentability of the claimed invention even prior to the laying-open of the invention application.”
Informing the general public about the grant of a dual filing utility model application and allowing for filing of third party observations in the corresponding invention application at its earlier stage marks a significant improvement in Taiwan’s patent system.
To be specific, at the time when a party has the legitimate right to enforce his/her utility model patent before the grant of the corresponding invention patent application, TIPO, through the introduction of a new practice in the dual filing regime, affords potential competitor(s) an earlier, fair chance to challenge the patentability of the invention claimed in a dual filing invention application.
"the new approach will prove to be a useful tool for a third party to circumvent infringement."
Thus, apart from filing (i) a petition to obtain from TIPO its technical opinion regarding a dual filing utility model patent; and (ii) an invalidation action against it, the new approach will prove to be a useful tool for a third party to circumvent infringement.
Chiu-Ling Lin is a patent attorney at Saint Island Int’l Patent & Law Offices. She can be contacted through the firm’s website: http://www.saint-island.com.tw
Taiwan jurisdiction report, Saint Island International Patent & Law, TIPO, utility model patent, invention application, dual filing, third-party