"*~FAQs for Patent~*"

Expedited or Preferential Prosecution (Explained Through Qs & As)

Are there procedures in your country available for expediting prosecution?
A: Yes.

If so, what are the costs and procedures required?
A: Our service fees depend on how lengthy the evidencing paper is. Since expediting prosecution applies to the published application only, we need to petition an early earlier publication by paying the official fee NT$1,000 (US$33) if the expedited prosecution is desired at an early stage immediately after filing a patent application. Our service fees for petitioning an early earlier publication will normally be NT$3,000.

Is expedited prosecution limited to certain situations and/or types of technology?
A: Article 39 provides for Preferential Examination as follows:

      "If an invention patent application is commercially practiced by a non-patent applicant after earlier publication,
       the patent-dedicated office may preferentially examine it upon petition.
       The petition made in the preceding paragraph shall be accompanied with relevant evidencing paper."

From a practical view, how likely is it that expedited prosecution will be granted?
A: It is mandatory to be granted.

What is the actual time gain (on average) as compared to "regular" prosecution?
A: It depends on how soon we petition the expediting examination. The preferential examination is officially set to be completed in 6 months but the official promise is not always very reliable.

What are the potential disadvantages?
A: There is no predicted or detectable disadvantage. Do you believe that requesting expedited prosecution is worthwhile? A: If an earlier patent is desired or really necessary, it certainly is worthwhile.

Utility Models (Explained Through Qs & As)

Can you file the same claims in the utility model and a utility patent?
A: No.

What are the differences in the enforceability between a utility model and a utility patent?
A: Basically, there is no difference therebetween except a utility model needs an official technical report in advance.

When can one file a utility model?
A: On or before the date of filing the utility patent.

Does it need to be a divisional of a utility patent or can the utility patent and the utility model be filed concurrently?
A: A utility model can either be converted from a divisional of a utility patent or be filed concurrently with the utility patent where the former route is more expensive because of two procedures.

Is there a preferred or required form of claims in a utility model?
A: Except a method, compound or composition, a utility model can claim anything a utility patent can claim.

Can functional language be used in the claims (for example, "a device configured to" [do something])?
A: Yes.

How can the connecting relationships between the claim elements be defined? Is it acceptable to recite claim elements that are "in communication with" each other? Or do the elements need to be "connected to" each other?
A: The phrase "in communication with" is acceptable in the claim in a utility model.

Enforcement (Explained Through Qs & As)

Are there procedures for discovery in a civil proceeding?
A: Yes, but not in the strict sense as that in the US. Specifically, we have the preparatory stage within which both parties should submit or produce evidence. Nevertheless, a later submission before the conclusion of the oral debate is always acceptable.

How long is the approximate court backlog for IP litigation?
A: Since the IP court is running from July 1, 2008, although they do not receive that many IP litigation cases as anticipated, a 6-month period for each instance for an average case should be a good estimation.

What are the damages that can be recovered for an IP litigation, and how are they assessed (e.g. treble damages)?
A: Under our Patent Law, Article 85 provides about Damages as follows:
     "Upon claiming damages under the preceding Article, any of the following items may be selected to calculate the
     loss:
    1. Pursuant to the provision of Article 216 of the Civil Code, provided the invention patentee may take the difference of subtracting the profit normally acquirable through his practicing patent right by the gained profit of practicing the same patent right after infringement as the suffered loss if unable to provide evidence means to prove its losses;
     2. Pursuant to, through the infringing act, the infringer’s gained profit which shall be the overall revenue of selling said article when the infringer is unable to prove its costs or necessary expenses; Except provision in the preceding paragraph, an invention patentee may additionally claim appropriate compensation for business reputation abated through infringement. The court may award compensation in the preceding two paragraphs over the loss amount, depending on the infringing circumstance if the infringing act is intentional, provided the awarded compensation shall not exceed three times of the loss amount."

Can the prevailing party receive payment for legal fees?
A: No.