For organizations and inventors accustomed to dealing with the United States Patent Office (USPTO) and the European Patent Office (EPO), the transition to filing for patents in Taiwan at the Taiwan Intellectual Property Office (TIPO) is not too difficult a next step. Most issues, linguistic and procedural, for example, are easily addressed by working with a reliable Taiwan patent agent or attorney.

However, due to fundamental differences in patent systems, these organizations and inventors may not fully be aware, and as a result unable to take full advantage, of their strategic options.

One such option is the Taiwan Utility Model Patent.

Another Tool for Patent Strategy

Compared to an invention patent, a Utility Model Patent is easier, faster and cheaper to obtain, as it is less rigorously reviewed. However, trade-offs include a relatively limited scope of patentable material and shorter duration of exclusivity.

Most importantly for patent strategists, in Taiwan the same level of protection granted to invention patents is also granted (mutatis mutandis) to Utility Model Patents. This means a Utility Model Patent may potentially be a more effective solution than an Invention Patent. A Utility Model Patent, in this way, can be a vital complementary tool in an organization's overall patent strategy.

Notable Features

Although the Taiwan Utility Model Patent is similar to other utility models around the world, it has three notable features: Class of Subject Matter; Formality Examination and Technical Evaluation Report

Class of Subject Matter

The scope of patentable matter for Utility Model Patent is smaller than that for invention patents. The material must have a physical/tangible presence, and involve shape, structure or a device, as well as standard requirements like commercial-viability and not detrimental to the public good. This means no methods or substances (such as chemicals, gases, biological materials, computer software, etc…).

Formality Examination

Prior to a sweeping set of amendments to Taiwan patent law in 2003, all Utility Model Patent applications required a substantive examination. However, after the amendments, applications now only undergo a preliminary "Formality" examination (形式審). The Formality examination reviews for fundamental conditions such as unity of invention, proper format, disclosure of essential matters, specifications or drawing, and similar basic requirements. As long as the application satisfies the Formality examination, a Utility Model Patent can be issued. Note that a prior art search is not conducted and applications are not examined for novelty or inventive steps!

Technical Evaluation Report

To enforce the Utility Model Patent, however, the patent holder must have a "Technical Evaluation Report" (技術報告). It is completed by a Taiwan Intellectual Property Office (TIPO) examiner and optional (if you do not plan to exercise your patent rights, then you do not need one). A technical evaluation report is the examiner's OPINION, not a decision, on the novelty, inventiveness or state-of-the-art of each claim in the Utility Model Patent. A report can be obtained as quickly as 6-months upon receipt of request. A Technical Evaluation Report is important because it absolves the patentee of damages claims should the Utility Model Patent ultimately be proven invalid.

Applications & Benefits

Used creatively, the Utility Model Patent can be used to optimize a patent strategy. Its advantages include:

Speed

In fast-changing industries, the speed at which a Utility Model Patent is granted (one year compared to the four years for invention) allows a company a quickly obtainable tool to protect or license its invention.

Options

A company can file for a Utility Model Patent and, depending on strategy, later convert the application to an Invention Patent application, or vice versa. These options provide applicants with multiple paths to achieve their goals.

Flexibility

A company can also file both Invention and Utility Model Patent applications at the same time (though an invention may only have one of the two). The Technical Evaluation Report will provide a basis for allowability of claims and act as fair warning on any prior art or issues a TIPO examiner may encounter. This feedback, as well as the extra time, allows the applicant to further observe the market and make adjustments to the invention application. Should the invention application fail or be deemed unnecessary, the invention still has protection from the Utility Model Patent.

Quotas

The lack of substantive examination and speed of issue allows companies to meet patent quotas, impress and attract investors, or even threaten litigation against other competitors that may not have enough resources to defend against a lawsuit.

Controversy & Conclusion

A Taiwan Utility Model Patent can potentially be a powerful tool for organizations. It provides multiple options, faster response, and an official certificate from TIPO—without even having to undergo substantive examination. Used correctly a Utility Model Patent can significantly strengthen an organization's patent strategy.

In the "wrong" hands, however, a Taiwan Utility Model Patent can create problems. The relative ease of obtaining a Utility Model Patent significantly raises the risk and uncertainty in the market. Unscrupulous organizations may abuse this tool, leading to unnecessary costs from baseless threats of infringement, pointless lawsuits and increased workload at the legal department or even Patent Office level.

Accordingly, organizations and inventors must set aside time to fully understand the Taiwan Utility Model, even if the ultimate decision is not to utilize it. This way, by understanding its advantages and limitations, you can ensure an effective, efficient and strong Taiwan IP strategy.