A Comparative Study on Utility Model System
Date Issued
2012
Date
2012
Author(s)
Lin, Yen-Ju
Abstract
The utility model system which formally examines applications has been enforced in Taiwan for almost ten years. Although it has been used a lot in industries of the country, this system courts serious doubts and criticizes as well from academic and practicing fields due to its own problem, especially how to distinguish high or low non-obviousness from invention patent and utility model. In recent years, the government tried to assemble various opinions from different areas, focusing on the amendent of Patent Act. Luckily, the draft amendment of Patent Act has been approved by the Executive Yuan in December 3rd, 2009, and passed by the Legislative Yuan in September 29th, 2011(The date on which this Act officially effectuates will be decided by the Executive Yuan.). This thesis is written and accomplished just during the special period of time that this Amendent of Patent Act goes from draft to formal regulation. Therefore, it not only compares the utility model law of Germany, Japan, and China, but also analyzes the appropriateness of the present and the Amendment of Patent Act.
In the first place, the Amendent of Patent Act entirely abolishes the difference of inventive step requirement between utility model and invention patent, since it is too difficult to judge the distinctions of technical level requirements between these two patent categories. Nevertheless, to observe the history of utility model in other developed countries, it should be acknowledged that utility model was built to protect those articles which hardly achieve the requirement of inventive step of invention patent. In addition, as the procedure limited to formal examination from 2004, applicants may readily acquire utility model rights. Accordingly, for the Patent Authority, it is reasonable to believe that the burden of examining eligibilities of these claims can be reduced. Moreover, the Amendent allows the same applicant to apply for an invention patent and a utility model patent for the same creation on the same date. It also prevents some troubles for applicants when they need to apply for patent rights because as they claim both utility model and invention patent, applicants can obtain at least utility model right first. After passing substantial requirement of invention patent, the patentees of utility model possess the options to choose invention patent. As a result, the Patent Act should retain the difference of inventive steps between utility model and invention patent to keep those lower technical inventions can be protected by the Act.
Secondly, the Amendent regards technical evaluation reports as one of the necessary requirements while patentees exercise their utility model rights, enhancing the function and magnitude of these reports. Since patentees of utility model rights are not allowed to plead for any remedies no matter in the original Patent Act or the Amendent if there is any fault in their reports, they should not be asked to present technical evaluation reports while exercing their rights. Namely, the report should not be regarded as an absolute and necessary requirement. In other words, warning and exercising utility model rights with due care is enough for these patentees within the utility model system. It is more than true that this thesis stands in diametric opposition with the Amendment of Patent Act. However, even in the Amendent, the thesis still suggests that applicants should be allowed, by advance notices, to make necessary statement, supplement or amendment to their applications before disadvantage decisions of technical evaluation reports being settled.
Thirdly, the Amendent strengthens the functions of technical evaluation reports, however, it examines the prior art of them only within the field of any publications which have been disclosed to public. That is to say, information which has been put into public use or others will not be examined in the process of doing the research of technical evaluation reports. Nonetheless, it goes without saying that the consquence probably increases uncertain risks to people who desire to use the specific technics, because some parts of prior art are not examined in these reports. As is well known, technical evaluation reports play a substancial role in utility model system to balance the rights of patentees and public use, therefore, the Patent Authority should better maintain the original way to examine and accompolish the reports as best as they can.
Last but not least, this thesis agrees with the position of the Amendent’s allowance that the same applicant can file an invention patent and a utility model patent application for the same creation on the same date. And after the Patent Authority determines the invention patent is acceptable, the applicant has the right to select one patent within a specified time limit. However, this thesis does not express solidarity with the provision that once the applicant selects the invention patent, the utility model patent will be considered non-existent ab initio. As a matter of fact, it is reasonable to assume that patentees might exercise their rights after the utility model rights approved, such as filing lawsuits, licensing, compromise and settlement, and so on, which is at the time much earlier than invention patents approved. Hence, how does the law interpret these existing relationships before the applicants get the rights of invention patents? Hardly can the law regard utility model rights as non-existent ab initio without causing destroys to those existent legal relationships. It is therefore quite obvious that the utility model rights should only invalidate after the applicants choose the rights of invention patents, or there will bring about many difficulties dealing with those existent relationships.
Subjects
patent system
utility model
formal examination
technical evaluation reports
utility
novelty
inventive step
non-obviousness
Type
thesis
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