TIPO May Propose Amendment to Patent Act to Allow Concurrent Filing of Invention Patent Application and Utility Model Patent Application on The Same Technology. Scholars Said Differently at The Public Hearing.

Should the patent applicant be allowed to file a utility model patent application and an invention patent application on the same technology concurrently?  TIPO held a hearing on 18 August 2006 to hear opinions on the issue.  Many corporate patentees and patent attorneys attending the hearing welcomed the idea of allowing concurrent filing as concurrent filing will merit corporate patentees’ planning and developing of their patent strategy.  But some of the scholars present at the hearing said differently.

 

According to the Patent Act, where an invention patent application and a utility model patent application are filed on the same day in respect of the same invention or creation, if the applications are filed by the same applicant, the applicant shall be requested, by a notice, to select one of such applications for filing within a given time limit and if the applications are filed by different persons, the applicants shall be requested to reach a compromise between themselves.  In the first case, failure of the applicant to make the selection within the time limit shall cause the dismissal of all of such applications.  In the second case, none of the applicants shall be granted an invention patent if no compromise is reached

 

To avoid the above restriction, patent attorneys and applicants have made it a common practice to file the invention patent application and the utility model application separately with only one day apart.

 

According to TIPO’s press release, TIPO is inclined to open the door for concurrent filing.  For corporate patentees, in particular, concurrent filing will allow them to obtain better protection of their innovation by benefiting from (a) the formality examination adopted for utility model patent applications for an early grant, and (b) the substantive examination adopted for invention patent applications to solidify the protection of their innovation.

 

Issues will arise that must be addressed though.  These issues include, among others, (a) how the utility model patent should be continued by the invention patent in terms of the operation of the patent right, (b) transparency of the administration of patent applications, and (c) concurrent repeal of the legal regime concerning switch of applications.  TIPO will invite opinions on this issue from all sides after drawing up the relevant proposed revision. (2006.07)

/EMA