COMPLEMENTARY MEASURES TO FORMALLY EXAMINE THE CORRECTION TO A UTILITY MODEL PATENT AFTER THE NEW PATENT LAW IS EFFECTIVE

Wei-Ting Chou, Patent Director, Patent Group I

¡½ Master of Agricultural Engineering, National Taiwan University

¡½ Bachelor of Medical Engineering, National Cheng Kung University

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I. Introduction:

After the new Patent Law is effective, a correction to a utility model patent will be subject to a formal examination.  However, a correction submitted with an invalidation case for a utility model patent still needs to be subject to a substantive examination.  Although there is a difference between the two examinations, on the condition where a correction is submitted with a later invalidation case during an administrative remedy for an earlier invalidation case, this difference will not cause an issue because the content in the correction will be substantively examined to determine whether the correction should be accepted.  However, during the administrative remedy for a specific invalidation case, if a correction is subsequently petitioned, this correction will be only formally but not substantively examined, and thus the Examiner will not make the determination above.  Specifically, because the prosecution period for the formal examination is always shorter than that for the administrative remedy, if each subsequent correction filed is accepted and thus formally examined, it will be highly possible that what is protected in the utility model patent is changing during the administrative remedy for the specific invalidation case, and thus the subject to be examined in the invalidation case cannot be identified.

II. Complementary measures:

On the condition there is a new invalidation case after a correction is filed during the administrative remedy of the specific invalidation case, the prosecution for the correction should be deferred until the decision on the specific invalidation case becomes irrevocable.

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