PRACTICE ON TECHNICAL REPORT FOR NEW UTILITY MODEL PATENT

07/01/2005

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An amended law has made it easier for prospec-tive patent applicants to avoid infringement and understand their competitors' inventions. In compliance with the 2004 Patent Act amendment taking effect as of 1st July, formalities examina-tion has been applied to new utility model patent applications. Key points for such new practice are as follows:

If a new utility model patent application does not have the circumstances stipulated in Article 97, Paragraph 1 of the Patent Act, it will be granted. Once a new utility model patent is granted, after formality examination and after the patent grant is published in the Patent Gazette, anyone may apply to the IPO for a technical report of the new utility model patent with respect to any of the following:

1.Whether it has been published prior to patent filing or have been used publicly or become publicly known;

2.Whether it can be easily achieved by per-sons with ordinary skills in the art based on the concerned prior art;

3.the novelty priority of an earlier filed ap-plication; and

4.Whether two or more patent applications have been filed for the same new utility model.

An application for a technical report may not be withdrawn. The IPO will announce such application in the Patent Gazette and appoint a patent examiner to produce the report with his name signed on it. When an application is filed with a statement of an unauthorized use of the new utility model by a third party for commercial purposes, together with pertinent evidentiary documents, the IPO will complete such report within six months. An application for such report may be filed even after the new utility model patent right has extinguished.

When enforcing a new utility model patent, the patentee (or an exclusive licensee) should present the technical report as warning. If the patent right has been invalidated and others have suffered losses due to the enforcement of such right prior to the invalidation of the patent, the patentee (or the exclusive licensee) should bear liability for compensation of the damage. Where the patentee (or an exclusive licensee) enforces the new utility model patent according to the technical report or has exercised due care in the enforcement, he should be presumed to be without faults.

IPO’s current practices for handling a technical report of a new utility model patent are summa-rized as follows:

For the same new utility model patent, the IPO will accept two or more applications for tech-nical reports.

Facts with respect to an application for a technical report should be published by the IPO in the Patent Gazette. After the report is completed and if the petitioner is a third party, the IPO will inform the patentee and serve him with a copy of the report. Whether the content of the report is in favor of the patentee or not, he will not be notified to present any defense.

When producing a second (or any subsequent) technical report of the new utility model patent, for references searched during the issuance of the first report (or prior reports), the IPO will not evaluate them again. However, if there are any different periods (e.g., other patent mate-rials are found, which were not searched but have been known to the public or announced), or if the materials not considered are found in the public domain, or if an amendment to the specification patent changes the evaluation basis from the first report (or earlier reports), the IPO will evaluate the materials that have not been covered in the first report (or earlier reports). Where the specification has been finally amended, thus changing the scope of patent application reviewed, it is likely to ar-rive at different evaluation results. Except for the above, the IPO will not make a different decision.

Any person may voluntarily provide citation information or pertinent technical data to the IPO as reference for production of a technical report.

Anyone may request to review, make tran-scripts, take photos of, or copy any content of a technical report of a new utility model patent. Where the report is found inconsistent with the patent requirements in the course of its pro-duction, an evaluation will be carried out. If anyone deems that the evaluation result shows non-compliance with patentable requirements, he may seek to invalidate such patent right via cancellation actions.

When a technical report of a new utility model patent is requested with a statement regarding a third party's unauthorized use for commer-cial purposes, pertinent evidentiary documents should be submitted. The IPO should com-plete the report within six months.

A technical report is not an administrative decision, and it does not have a binding force. It simply serves as a reference for the patentee of the new utility model in the exercise of his patent rights. Therefore, no administrative remedy procedure can be filed against the report.