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According to the Patent Act, through compliance confirmation of formality examination of a new utility model application, a patent should be granted to the said patent application unless there is any violation of the various circumstances envisaged under Article 97 Paragraph 1 of the Patent Act. In other words, at the time a new utility model patent is granted, the application has not undergone substantive examination by the Intellectual Property Office (IPO). After a new utility model patent is granted through formality examination and after the patent grant is published in the Patent Gazette, any person may file an application with the IPO for a new utility model technical report on the patent, with regard to the circumstances addressed by any of the following articles of the Patent Act:
Article 94 Paragraph 1 Subparagraphs 1 and 2 (i.e., before the application was filed, the util-ity model has been published, or has been publicly used or has been made known to the public).
Article 94 Paragraph 4 (i.e., the patent appli-cation is not filed within six months after the utility model was publicly disclosed through research or experiments, or through exhibition at a government-sponsored or govern-ment-approved trade show, or through a pub-lic disclosure against the intent of the appli-cant).
Article 95 (i.e., the new utility model claimed in the patent application is same as one cov-ered by an earlier filed patent application).
Article 31 (i.e., first-to-file principle).
An application for a utility model technical re-port cannot be withdrawn. The IPO must publish in the Patent Gazette the fact that a report has been requested, and must designate a patent examiner to prepare the report, which must bear the examiner's name. If an application filed for the report states that the utility model is being practiced for commercial purposes by a third party other than the patentee, and if documentary evidence is submitted, the IPO must issue the requested report within six months. A report may be requested even after the patent concerned has become extinguished.
If a patentee (or licensee) enforces rights under a new utility model patent, it should submit a new utility model technical report issued by the IPO when addressing a warning to an alleged in-fringer. If a new utility model patent is revoked, the patentee should be liable to compensate other parties for losses suffered by them due to the patentee's enforcement of its patent rights prior to patent revocation. However, if the patentee relied on the content of a utility model technical report when enforcing its rights, or exercised due care, it will be presumed not to have been at faults.
The IPO's current practice for handling applica-tions for utility model technical reports is as follows:
The IPO should accepts two or more separate applications filed for technical reports with respect to the same new utility model patent. If any person (including the patentee) files an application with the IPO for a technical report on a patent, for which a report has already been requested, the IPO will prepare a second report or a further report.
The IPO will announce the fact that a report has been requested in the Patent Gazette. If the applicant is one other than the patentee, the IPO will send a copy of the technical report to the patentee as well. Regardless of whether the content of the report is favorable to the patentee, the IPO will not request the patentee to file any defense.
When the IPO prepares a second (or any fur-ther) report, it will not review information that has already been covered when preparing any previous report. If the search time period is different (for example, other laid open or published patent information is discovered, which was not previously searched), there is any other publicly disclosed information that was not previously considered, or if the patent specification has been corrected so that the basis for assessment is different from that for a previous report or previous reports, the IPO will evaluate such information that was not previously searched or considered. If a cor-rection to the concerned patent specification has become irrevocable, the corrected claims will be deemed the basis for the new evalua-tion, and under these circumstances, the out-come may be different from that of the pre-vious report. Otherwise, in principle, the IPO will not conclude a different evaluation opin-ion in such new report.
Any person may, at his initiative, provide evidentiary document or related prior art in-formation to the IPO for its consideration when preparing a new utility model technical report.
Any person may review, transcribe, photo-graph, or copy the content of any utility model technical report.
At the time when preparing a utility model technical report, if the patent examiner finds that the concerned new utility model does not meet the requirements for patentability, the report will reflect this fact. Any person who believes that the outcome of an assessment is not in compliance with the patentability re-quirements may seek a revocation of the new utility model patent through filing a cancella-tion action.
If an application for a new utility model tech-nical report states that a third party is practic-ing the new utility model for commercial purposes without authorization, and docu-mentary evidence showing the same is sub-mitted, the IPO should complete the technical report within six months.
A new utility model technical report, in nature, is not an administrative decision, and is not binding. The report is intended merely for guidance relied upon by the patentee when enforcing his patent right. Therefore, no ad-ministrative remedies against any technical report are available.
