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Applicant can keep either an Invention Patent or a Utility Patent for a patent application case
On November 29 , 2011, the Legislative Yuan passed adraft amendment to the Patent Act proposed by the Executive Yuan. The new Patent Act will be effective as of November2012.
Typically, it takes 2 to 3 years to obtain a patent from a patent application. In order to gain acompetitive edge in the market and ward-off infringement, an applicant usually desires to get a Utility Patent quickly with out going through the substantive examination process as required by an Invention Patent application. In order to avoid “double patenting” and protectthe public interests, Patent Offices on both sides of the Strait have set up new regulations (Article 32 of Taiwan PatentLaw,and Article9-1of the China Patent Law), governing such a situation that should be paid attention to by an applicantin applying for an Invention Patent and Utility Patent for the same patentcase.
With respect to parallel application strategy for patent and utility model in China and Taiwan, there are clear and specific Patent Acts in these two jurisdictions. The applicant can take the following steps:
1. Both side so fthe Strait define that an invention patent application and autility patent application having the same contents, as having the same Specification and Claims. Therefore, only the subject of a device or shape and structureofan object is eligible for the “parallel application” treatment. For the subject of a method, the subject should be changedto a device and the Claims should be rewritten in a “means-plus-function” format, to be eligible for application.
2. Both side semphasize that the “ parallel application” must be filed on the same date. Normally, a Utility Patent application tends to obtain a patent first and later if the Patent Office decides that an invention patent should be granted, it would inform the applicant to choose one of the Invention Patent and Utility Patent. This is so that an applicant would not lose both Patents, in a case where the applicant first abandons the Utility Patent and after wards the Invention Patent application is rejected.
3. In case that before the decision of the Invention Patent application the previously approved Utility Patent is annulled due to unpaid annual fee or other reasons. Since the technology concerned was already published and disclosed the related Invention Patent would not be granted. This problem can be overcome through amending the Claims ofthe Invention Patent application, or adding new claims to it based on the contents of theSpecification.
4. In examining the “parallel application ”,the China Patent Office requires that separate Specifications should be submitted for Utility Patent and Invention Patent applications. Otherwise the applicant can not obtain an Invention Patent by renouncing the Utility Patent already obtained (China Patent Enforcement Rules, Article 41-2). Presently, the Taiwan Patent Office does not have such a regulation, yet it may do so in the subsequent amendment of Patent Enforcement Rules.