Effective July 1st 2022, the Taiwan Intellectual Property Office has ordered some changes to the Patent Examination Guidelines. Concerning parallel filing, there were some questions as to how the IP Office should handle a pending invention patent application if, in the meantime, the granted utility model that covers the same subject matter is invalidated. First of all, it should be noted that filing an invention patent application and a utility model application on the same day, by the same applicant and for the same subject matter, is a commonplace and practical strategy for getting early protection of an invention. Utility models, giving protection of the shape and structure of an article, aren’t examined substantively, so they will be granted protection within just a few months. On the other hand, the examination of an invention application for the same subject matter will take longer. That could take up to one year or so, and if the invention patent application is allowed, the applicant can then opt for either the allowed invention application or the already granted utility model. If the former is chosen, the utility model rights will be extinguished. With the new guidelines, the procedure about how to deal with parallel filings when the granted utility model is invalidated has now been decided upon. Now, the validity of an invention patent application must remain consistent with the validity of the granted utility model. If the utility model invalidation is appealed, the examination of the invention patent application should be suspended during that process. The applicant does, however, have the right to make amendments to the invention application such that it is substantively different from the utility model claim. In that case, the examination of the invention application can continue.
Friday, October 14 2022 \ Published by Deep & Far Attorneys-at-Law.