BY STELLAR J. H. LIN

According to the provisions of Article 32 of the Patent Act in Taiwan, an applicant filing a patent application for invention and a patent application for utility model for the same creation on the same date shall make respective declarations in respect of the said applications.

By dual filing of an invention application and a utility model application on the same date, the applicant can enforce the utility model patent against infringement sooner because the patent application for utility model only undergoes a formality examination. The applicant may then choose to abandon the utility model patent upon a notification from the Taiwan Intellectual Property Office (TIPO) that the applicant is required to complete the granting process of the invention application. The patent right of the invention patent is continued from the patent right of the utility model patent for the same creation. That is, the continuation of patent right for the same creation is valid.

In a recent public hearing, the TIPO announced that:

1.   If the applicant would like to file a divisional application for an invention application and continue the patent right for the same creation, the applicant must make a declaration as mentioned above when filing the request for division. If the applicant does not make such a declaration when filing the request for division, the continuation of patent right for the same creation does not apply to the divisional application.

2.   After filing the divisional application for the invention application and also making the declaration for the continuation of patent right for the same creation, the TIPO will notify the applicant to select one application (that is, from the invention application and the divisional application thereof) as the only invention application for the continuation of the patent right during substantial examinations of the invention and divisional applications.

The TIPO emphasized that the legislative purpose of Article 32 of the Patent Act is to allow the patent right of an invention application to be continued from a utility model application if the invention application and the utility model application relate to the same creation. However, if several divisional applications for an invention application are filed and a respective declaration is made for each divisional application, the TIPO will notify the applicant to make a selection to choose one application from the several divisional applications during the examination stage for each divisional application, to thus ensure that only one invention application is selected to continue the patent right from the utility model application relating to the same creation. The patent rights of other divisional applications which were not selected by the applicant shall become effective from the respective issued dates of the divisional applications.