Procedural Facilitation - Applications for Obtaining Utility Model Technical Evaluation Report May Be Lodged Once The Patent Application Therefor Is Granted Ready for Publication.

According to the recent explanation issued by the Intellectual Property Office, the utility model applicant may apply for obtaining the technical report on the utility model from the IPO as soon as the relevant patent application is granted ready for publication and issue.

 

Utility model patent applications are examined in form rather than substantively after the latest amendment to the Patent Act came into force. According to the first paragraph of Article 103 of the Patent Act, after a utility model claimed in a patent application is published, any person may apply for obtaining a technical evaluation report from the Patent Authority pertaining to the proposed utility model. Further, exercising the patent right in the utility without obtaining such technical evaluation report from the Patent Authority or without exercising the duty of due care, the utility mode patentee may risk liabilities for damages should the utility model be invalidated.

 

In practice, most utility model patentees will obtain the technical evaluation report from the IPO before asserting the right to license. Opinions have varied, however, with respect to when the patentee may apply to obtain such report. The IPO gave its explanation on this issue citing the first paragraph of Article 103 of the Patent Act which provides that “After a utility model claimed in a patent application is published, any person may, with respect to the conditions set forth in subparagraph 1 or 2 of the first paragraph, or the fourth paragraph of Article 94; Article 95; or Article 31 applicable mutatis mutandis under Article 108 of this Act, apply to the Patent Authority for obtaining a technical evaluation report pertaining to the proposed utility model.” That is, the application for obtaining the technical evaluation report may be filed after the patent application is publication.

 

Notwithstanding, with the patent application granted and the certificate fee and the first patent annual fee duly paid in full by the applicant, though the proposed utility model is yet to be published, upcoming issue of patent on the utility model is clear and definite. Therefore, in consideration of facilitation of the relevant application and administration, the IPO will accept applications for obtaining the technical evaluation report once the patent application is granted ready for publication. However, it should be noted that the technical evaluation report applied for will not be issued until after the patent application is published. (2005.8) 

CYJ/EMA