Illustrations of Patent Prosecution

Recently, the patent systems in different countries have gradually accorded with each other. The following article gives a brief introduction to the patent prosecution for some primary countries.

As we know, the intellectual property can be divided into patent and trademark. Among patent, there are three types, namely invention, utility model, and design. In Taiwan, utility model is of registration system and the certificate can be obtained within half year, but the practice of utility model requires the technical report from the official patent office. The technical report from the patent office, however, often gives an appraisal as insufficient of inventive step, and this brings trouble to the clients when putting the utility model into practice after obtaining the patent, so it is generally suggested for the clients to file as an invention application.

Design and trademark, in some degree, have similarities in the subject matter. Generally speaking, design is for the variation in the shape of the object.  However, a figure with visual effect such as pattern and color of the object without distinctive shape, trademark can also be applied. For expense concern, the expense for trademark application of fewer classes will be lower than that for design application.

Correction for the specification of utility model can be filed within 2 months from the application date, and correction for an invention application can be filed, internationally alike, within 15 months. For priority claim, the deadline for invention is one year; that for utility model is a half year. 

In Taiwan, many applicants are not confident of their patent, so they tend to file Taiwan utility model application. As a matter of fact, it shows that many applications with technical features of invention are appraised as lack of inventive step in Taiwan technical report, and this is such a pity. In illustrations, many utility model applications of daily appliance can be granted invention patent after examination in the U.S., where no utility model system exists.   

For the European search report prior to the substantive examination, applicant should provide sufficient corresponding reasons to accelerate the obtainment of patent and lower the cost. For IDS, it is noticeable for the applicant that he can be exempt from the official fees if the IDS is submitted in the U.S.within three months after the authorities in the foreign countries issue the Office Action.    

In Taiwan, not until paying the certificate fee and annual fee can the certificate and patent be obtained; the payment deadline is 3 months from the issuance of the grant notification. The other annual fees can be paid within a half year from the deadline with a surcharge equal to the annual fee. Compared to the surcharge for late payment of the U.S. annual fees, of which the surcharge is more than one hundred thousand NT dollars, the surcharge for late paying of Taiwan annual fees is much lower, which is about several thousand.

Recently, there is a decrease in the official fees of Japan and Europe. The European designation fee, in particular, dramatically drops off, and the annual fees of Japan also become much lowered. This is good news for applicants. The translation fee for Japan application is not especially high; generally, the client, if not familiar with Japanese language, is suggested to file the  Japan patent application in English.

Electronic filing began to be practiced in Taiwan in 2008. Applicant is required to make individual registration in a website to obtain his own ID before the attorney submits electronic filing. The attorney is also required to complete the Internet identification procedure before he provides his client with electronic filing service. Taiwan electronic filing procedure is slightly complicated and not yet complete in inputting specific drawings, chemical formulas, and formulas, but its confidentiality is no problem and trustworthy. By electronic filing, Taiwan official patent office can deduct 20 U.S. dollars from the official fee for each application, and the certificate for application number and date can be obtained on that day.

As for the prosecution procedure in China, although the fact that China disclaims Taiwan's sovereignty causes Taiwan and China to face the dilemma of disclaiming each other’s priority, the problem can be solved by filing on the same day or at an interval of several days, but an interval within one month is suggested. In addition, because China disclaims Taiwan's sovereignty, Chinaauthority does not regard the patent gazette published by Taiwan patent office as public information but as non-existent information and not capable of proof or basis of patentability. On the contrary, Taiwan acknowledges the patent literature of China. The marketplace of Chinapatent attorney is chaotic; personnel’s job conscience needs to be enhanced and firms’ sense of responsibility needs to be improved. The feasible way is to seek reliable China patent agent through Taiwan agent.

In Taiwan, it does not cause much trouble to the applicant if he files the same patent content for invention and utility model simultaneously. Generally speaking, compared to the obtainment of invention certificate, which takes at least approximately one and half a year, utility model certificate can be obtained within a half year.  It thus encourage a client to also file a utility model at the same time, if necessary. In prosecution, applicant can file invention and utility model application simultaneously and puts the patent into practice through obtaining the patent certificate within around a half year. When the corresponding invention application begins to be examined around one and a half year after filing, if the official office discovers the existence of the same application of utility model, the official office will request the applicant to choose one between invention and utility; at this time, the applicant can decide whether to retain the utility model certificate or not. If the foregoing is not discovered (the probability of it nearly null), the applicant can abandon the invention or utility model at any time hereafter, keeping on practicing. This is a practical way for applicants who are eager to exercise the patent right earlier and, at the same time, the surcharge is very little.