VOL. 19 NO. 3 MAR 16, 2011 http://www.industry.net.tw http://www.patent.org.tw
MEASURES
New Measures to Issue Priority Documents for Patent Applications
Take Effect on March 1, 2011.
To enhance service quality, TIPO adopts new measures to issue priority documents for patent applications starting March 1, 2011. Applicants no longer need to submit a copy of the Chinese specification and accompanying drawings when applying for a priority document for a new patent application that is filed on March 1, 2011 or later.
Instead, TIPO will print out a copy of the Chinese specification and accompany drawings that obtained the filing date on its own.
1 Currently, applicants need to submit the initially filed specification and drawings to the TIPO to order a priority document for a patent application. After the priority document is obtained, applicants will then submit the document to other patent offices to claim priority rights. Applicants not only need to pay for the costs of copying the specification and drawings as well as the filing fees, but also when the specification or drawings is supplemented or amended during prosecution, TIPO needs to compare the copy submitted by the applicants and the one initially filed for consistency, thereby increasing administrative costs.
Therefore, TIPO intends to utilize electronic documents and adjust document collecting procedures. For new patent applications filed on
March 1, 2011, TIPO will first scan them to establish an electronic copy thereof. When a priority document for a patent application is requested, TIPO only needs to verify the filing date before printing the first copy of the Chinese specification and drawings which obtained the filing date from its document management system. The priority document can then be made. Applicants no longer need to submit related patent specification and drawings when applying for the priority documents, thereby reducing the time and costs.
MEASURES
TIPO Revised the Q&A on the Technical Evaluation Report of a Utility
Model Patent. The Revision Takes Effect on January 25, 2011.
In response to the current practice of the technical evaluation report of a utility model patent as well as the public’s reaction to it, TIPO revised the Q&A on the technical evaluation report of a utility model patent as well as its related forms. Such revisions take effect on January 25, 2011. The revisions include:
I. Regulations on accepting a request for the technical evaluation report.
2 1. The filing and handling procedures for a request
for the technical evaluation report of a utility model patent that has already been irrevocably revoked:
For a utility model patent that has already been irrevocably revoked, the patent right thereof is deemed not in existence ab initio. The subject of the technical evaluation report does not exist, and thus the request for such report will not be accepted. With respect to a request for the technical evaluation report of a utility model patent that is irrevocably revoked after the request has been accepted, the making of the technical evaluation report will be terminated and the official fee returned. However, for those utility model patents that are successfully cancelled but seeking administrative remedy, the request for the technical evaluation report will still be accepted.
2. Handling procedures for a requester of the technical evaluation report of a utility model patent claiming a commercial practice of the patent by a person other than the patentee.
a. Whereas the requester is the utility model patent owner:
In accordance with Article 104 of the Patent Act, when exercising a utility model patent right, the patentee of that utility model right shall present the technical evaluation report regarding the utility model patent for the purpose of warning. Thus, it is necessary to obtain the technical evaluation report when the utility model patent owner encounters a commercial practice of the patent by others. The requester shall submit the relevant documentary evidence in accordance with Article 51 of the Enforcement Rules of the Patent Act, including a written notification issued by the patentee to a party not entitled to exploit the patent for commercial purpose, advertisement catalogues or other written documents reflecting the facts pertaining to commercial exploitation.
b. Whereas the requester is not the utility mode patent owner:
In such situation, in accordance with the meaning of Article 103, Paragraph 4 of the Patent Act, although such regulation cannot be applied directly, in order to assist the parties in handling infringement disputes, when the requester who is not a patent owner submits the relevant documentary evidence regarding a patent infringement dispute, such as a warning letter or an indictment involving a patent infringement case that has been sent by the utility model patent owner claiming patent infringement, the Office will take priority in making the technical evaluation report of the utility model patent at issue.
c. In accordance with Article 103, Paragraph 6 of the Patent Act, a request for the technical evaluation report of a utility model patent shall not be withdrawn once filed. With respect to the request that does not meet the requirement stipulated in Article 103, Paragraph 4 of the Patent Act, the reason will be explained in the notification. However, the technical evaluation report will still be made. The completion of the report is not limited to the six months stipulated by law.
3. Matters related to appointing an agent by the requester of the technical evaluation report.
a. The agent originally appointed by the utility model patent owner to handle all matters related to the said patent does not need to submit a power of attorney when requesting for the technical evaluation report.
b. The agent newly appointed by the utility model patent owner or originally not appointed to handle requesting the technical evaluation report of the said patent should submit a power of attorney stating the right to request for the technical evaluation report when filing a request of such
3 report.
c. An agent who is not appointed by the utility model patent owner should submit a power of attorney when requesting for the technical evaluation report.
4. Whereas a patent right is jointly owned, in accordance with Article 12, Paragraph 2 of the Patent Act, each of the joint owners can request for the technical evaluation report.
5. If a patent assignment occurs before the technical evaluation report of a utility model patent is made, the technical evaluation report will be sent to the requester who paid the official fee, and a copy thereof will be sent to the assignee.
II. Relevant regulations on making of the technical evaluation report.
After all claims in the utility model patent are compared with cited arts and deemed not novel and not obvious, a written notification as well as the references cited will be sent to the patentee for his/her response. The notification will include names of the cited references, such as patent number and the publication dates.
When requesting or making the technical evaluation report, if there is any related correction application that is in the examination stage at the same time, TIPO, in principle, will not wait for the result of the said related application to timely make the technical evaluation report. However, considering the economic principle of making the technical evaluation report, TIPO can, in exceptional cases, wait for the correction decision before the technical evaluation report is made if such a wait does not substantially affect the making of the technical evaluation report and if there is a possibility that the claims will be corrected in order to prevent the utility model patent owner from requesting another technical
evaluation report based on the corrected claim scope.
For claims of a utility model patent that are difficult to compare and thus cannot be effectively investigated, code 6 will no longer be used on the comparison result. No code number will be given to these claims, and an explanation will be given in the comparison result field as to why no code number is given. The portion of the technical evaluation report related to the comparison code and meaning thereof will include relevant description on cases where no code number is given.
III. Simplify the layout of the technical evaluation report.
1.Simplify and reorganize the technical evaluation report and basic patent right information.
The current layout of the technical evaluation report includes 16 items. There is also no obvious distinction between the basic information of the technical evaluation report and that of the patent right. To facilitate an easy reading of the technical evaluation report, all basic information on the patent right will be listed under one item (currently labeled as item 2). Also, agent information is placed below the applicant’s information in the technical evaluation report so that the items listed in the report are reduced to 10, thereby greatly simplifying the layout of the technical evaluation report.
2. Simplify the content in the prior art search field in the technical evaluation report:
a. Records of all domestic and foreign prior art searches are placed in the notes section of the technical evaluation report. The search period of the foreign art is one day prior to the filing date of the utility model patent. However, because the technical evaluation report also includes the
The reason for distinguishing IPC versions in the prior art search in the original technical evaluation report is because IPC adopted version 8 in 2006, whereas TIPO still used version 7 for its database.
Thus, the examiners need to indicate the different versions when doing prior art search. Since the patent database in Taiwan, U.S., Japan and the EU have completed the modification to the IPC8 version, there is no need to indicate the IPCs in different versions. Thus, the fields are combined in the technical evaluation report to simplify the administrative operations as well as the layout of the technical evaluation report.
comparison for the same invention or creation and for loss of right to patent, the domestic prior art search includes domestic art after the filing date and prior to the completion of the technical evaluation report, in addition to those prior to the filing date. Because the above prior art search scope and period apply to all technical evaluation report for utility model patents, the information only needs to be stated in the matters to note field.
There is no need to state the information separately. Therefore, the domestic/foreign prior art search period field is removed to enhance the making of the technical evaluation report.
b. The fields for domestic/foreign prior art search and publication as well as other references are combined.
3. Simplify the records of comparison result for each claim in the technical evaluation report.
When the number of claims in the technical evaluation report is relatively large and the claims do not satisfy the patentability requirements, the comparison result is listed claim by claim in the current technical evaluation report, resulting in a somewhat complicated overall layout. To simplify the records of the comparison result in the technical evaluation report, for those claims given the same code number for the comparison result, the records thereof will be combined in groups, thereby facilitate ease of reading.
Item 13, namely prior art search scope, listed in the original technical evaluation report separates domestic prior art reference from foreign prior art reference. These two fields are combined into domestic/foreign prior art reference; also, fields related to publication and others are seldom used in practice, and publications in fact refer to non-patent references. Therefore, the two fields are combined into non-patent references and others so as to simplify the layout of the technical evaluation report.
c. IPCs for prior art searches will be indicated in the IPC8 version.
TAIWAN IPR NEWS
PUBLISHER／PRESTON W. CHEN PUBLISHING AGENCY／
EDITOR-IN-CHIEF／LIEN-SHENG TSAI INTELLECTUAL PROPERTY COMMITTEE,
DEPUTY EDITOR-IN-CHIEF／JOSEPH C. CHEN CHINESE NATIONAL FEDERATION OF INDUSTRIES EDITORS／FRANCK LIN‧ANFERY HSU‧ALAN LAI ADDRESS／12TH FL., 390, FU HSING S. RD., SEC. 1,
TRANSLATOR／SUZY SHOUNG TAIPEI, TAIWAN, R.O.C.
TEL／886-2-27033500 FAX／886-2-27042477 E-MAIL／intell@cnfi.org.tw
THIS PUBLICATION IS FUNDED BY
THE GOVERNMENT INFORMATION OFFICE AND THE INTELLECTUAL PROPERTY OFFICE, MOEA
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