Newsletter
Supplemental Explanation of the "Two Applications for the Same Creation" Patent System from the TIPO
On 14 October 2014, the Taiwan Intellectual Property Office (TIPO) released a Case Study on "Two Applications for the Same Creation" patent system to explain how this system works. The main issues are as follows:
1. With respect to the "Continuation of Patent Rights" benefit brought from "Two Applications for the Same Creation" patent system, the Amended Patent Examination Guidelines ("amended Guidelines") stipulate that only one divisional application of the original invention application can quote the "Two Applications for the Same Creation" declaration cited in the original application.
According to the Case Study released by the TIPO, under the "Two Applications for the Same Creation" patent system, the utility model patent right will be extinguished from the publication date of "the invention for the same creation." This is why only one divisional application of the original invention application can enjoy the "Continuation of Patent Rights" benefit under the "Two Applications for the Same Creation" patent system. The other divisional invention cases which do not quote said declaration will also be granted invention patents, with their patent rights starting from the publication date, but their patent rights will not continue that of the utility model patent.
2. With respect to the "Two Applications for the Same Creation" patent applications, if, after examination, the examiner does not find any reasons against the patentability of the invention patent application, and, at this time, although the utility model patent right has been distinguished but the patent owner can still apply for reinstatement of its patent right under Paragraph 2, Article 70 of the Patent Act, the TIPO will still reject said invention patent application. The reason is that, since the legal status of the utility model patent has become a "patent right surely distinguished" status before the issuance and publication of the corresponding invention patent, the TIPO will not request the applicant to make a selection between the invention patent and utility model patent.
In such example, if the patent owner has applied for reinstatement of the patent right of the utility model patent to make its utility model patent come into effect under Paragraph 2, Article 70 of the Patent Act, the TIPO will request the applicant to make a selection between the invention patent and the utility model patent in accordance with Paragraph 1, Article 32 of the Patent Act.