Revisions to the Q&A on Technical Evaluation Report of a Utility Model Patent and its related measures take effect on January 25, 2011

In view of actual technical evaluation report practices and public responses, revisions to the Q&A on Technical Evaluation Report of a Utility Model Patent and its related measures take effect on January 25, 2011. Major revisions include the following:
1. Code number will no longer be used for claims that are difficult to evaluate and cannot be effectively investigated. Reasons for not using a code number will be stated in the evaluation result column.
2. When the revocation of a utility model patent is confirmed, proceedings of the technical evaluation report will be terminated and the application fee will be refunded.
3. In consideration of time effect, the technical evaluation report will proceed even if the result of an correction application is not determined. However, taken into account the economic principle, and without causing any delay to the evaluation proceeding, exceptions could be made to wait for correction decision, on the assumption that such decision would be granted, to complete the technical evaluation report based on the confirmed corrections.
4. The technical evaluation report would still be prioritized when related proves of patent infringement dispute is provided by the non-patentee.
5. Specifying regulations for appointing an attorney to file for technical evaluation report; simplifying the current layout of the technical evaluation report from 16 items to 10 items,etc.

Detailed explanations to the revisions are as follow:

1. Regulations on Accepting Technical Evaluation Report Application
(1) Filing for technical evaluation report and the processing thereof when the revocation of utility model patent rights is confirmed:
When the revocation of a utility model patent right is confirmed, the patent right loses its legal effect. Therefore, completion of a technical evaluation report is not necessary, and the technical evaluation report application would be dismissed. If the patent right is revoked after the technical evaluation report application is accepted, then proceeding to the technical evaluation report will be terminated and the application fee will be refunded to the applicant. However, when an invalidation action is established but is still in the administrative appeal stage, the technical evaluation report application would still be accepted as long as a revocation is not confirmed.
(2) When the technical evaluation report applicant claims that non-patentee has been involved in commercial practices
A. When the applicant is the patentee, s/he shall provide related proves, in accordance with Rule 51 of the Implementing Regulations of the Patent Act, such as patentee written notification, advertisement catalogues or other proves of commercial exploitation by the non-patentee.
B. When the applicant is a non-patentee, Article 103 Paragraph 4 of the Patent Act cannot be applied directly; however, to assist the parties involved in resolving the infringement dispute, TIPO would still prioritize the processing of the technical evaluation report, provided that the non-patentee provides related documents on the patent infringement dispute.
C. According to Article 103 Paragraph 6 of the Patent Act, once the technical evaluation report application is filed, it could not be withdrawn. Applications that do not comply with Article 103 Paragraph 4 of the Patent Act will be stated in the notification letter. Preparation of the technical evaluation report, however, will be continued and would not be restricted to the six-month completion timeframe.
(3) Appointing an attorney to file the technical evaluation report
A. The originally appointed attorney who has already obtained general authorization from the patentee does not need to provide a POA when filing the technical evaluation report.
B. When the patentee designates a new attorney or when the originally appointed attorney was not bestowed the authority to file for technical evaluation report, then a POA authorizing the filing of technical evaluation report must be included when filing is made.
C. A POA is needed when the technical evaluation report application is filed by an attorney of a non-patentee.
(4) According to Article 12 Paragraph 2 of the Patent Act, individuals of a joint-ownership may file for the technical evaluation report application.
(5) If the patent right is assigned before the technical evaluation report is completed, such report will be delivered to the applicant who has paid the necessary fee, and a copy would also be delivered to the assignee.

2. Regulations for completing a technical evaluation report
(1) After all claims on the utility model patent are evaluated and found to lack novelty and inventive step, a written notification along with the references cited will be sent to the patentee for response; names of the references cited (such as patent number) and their publication dates will also be included in the notification.

(2) In consideration of the time effect of the application, TIPO would not wait for the result of any related correction application that is still in the examination stage to process a technical evaluation report that has already been filed or is being processed. However, taking into account the economic principle of writing the technical evaluation report, and to prevent the patentee from re-filing a technical evaluation report application after the correction is granted, TIPO would wait for the correction decision, on the basis that the technical evaluation report would not be delayed and the assumption that such correction would be granted, before proceeding to complete the technical evaluation report based on the confirmed corrections.
(3)For claims that are difficult to evaluate and cannot be effectively investigated, code 6 will no longer be used on the evaluation result; no code number will be indicated on the technical evaluation report. Reasons for not using a code number will be stated in the evaluation result column.

3. Simplifying the layout of the technical evaluation report
(1) Simplifying the technical evaluation report and basic patent right information
For easier reading, all basic information on the patent right is listed under one item; information on the attorney is placed under the applicant’s information. Layout of the technical evaluation report is reduced to 10 items.
(2) Simplifying the content of prior art field of search :
A. Records of all domestic and foreign searches will be stated under “notes” of the technical evaluation report, and would not be listed separately under each case to enhance the efficacy of writing the technical evaluation report.
B. Reference columns for domestic references and foreign references will be combined into one “Domestic/foreign patent references” column; the “Publication” and “Other” columns will be combined into one “Non-patent references/other” column.
C. All IPCs for prior art searches will adopt the IPC8 edition. Since patent database in Taiwan, U.S., Japan and the EU have completed modification to the IPC8 edition, related columns in the technical evaluation report is combined to simplify administrative procedure and report layout.
(3) Records for the evaluated results is also simplified—evaluated results that have the same code number will be grouped together.

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