眾律國際專利商標事務所/眾律國際法律事務所

國內優先權 / 專利工程師林孟萱

Domestic Priority right /Patent Engineer Meng-Xuan Lin

一.前言

1. Preface

為使申請人在國內也可享受和國際優先權相同之利益，專利法90年修整導入國內優先權制度。國內優先權的目的是為使申請人於提出發明或新型專利申請案後，可以該申請案作為基礎(先申請案)，於12個月內再提出修正或合併新的請求標的再提出新的申請案(後申請案)，且能以先申請案之申請日，作為後申請案專利要件審查基準的時間點。

In order to guarantee its applicant to enjoy priority right domestically and internationally, Patent Law amended its domestic priority right system after 2001. The purpose for such domestic priority right is that an applicant lodged its invention application or utility model application as a base (prior patent application), to where you can lodge other applications within twelve (12) months period (later patent application), the priority date claimed at the prior patent application would be used as the reference date during the patentability examination.

二.國內優先權

2. Domestic Priority Right

專利法第28條規範了國內優先權的相關規定。國內優先權只適用於發明與新型專利，且發明與新型專利之間，可互為主張優先權之基礎案，但國內優先權不適用於設計專利；主張國內優先權之先申請案與後申請案的申請人須為同一人，如先申請案的人請人是複數，則應完全一致。

Patent Law Article 28 sets out its specification of relevant provisions for domestic priority right. Such domestic priority right would only be used for invention application or utility model application. In between its invention application and utility model patent, he/she may claim for such priority right in respect of the invention or creation described in the specification or drawings submitted along with his/her prior patent application; however such principle does not apply to a design patent as such. For people who claims for its domestic priority right shall be the same applicant for its prior patent application and later patent application, same rules apply to more than two applicants that need to be the same.

主張國內優先權可於後申請案增加、補充先申請案未揭露的技術內容，擴大專利保護範圍；也可透過主張國內優先權，將判斷申請案是否符合新穎性、進步性或先申請原則的專利要件的審查基準日提前到先申請案的申請日，但不是將申請日回溯至優先權日。因此，申請人可利用國內優先權制度，在先申請案優先權期限將到期前，提出後申請案，讓專利權保護期限延長近1年。

For people who seek for domestic priority right, they can do so by adding up its application and to add more details on its technical contents, for which has not been previously disclosed in the prior patent application so as to expend its coverage for patent protection. Through domestic priority claim, we can determine whether such application satisfied its patent application requirement in terms of its novelty, progressive or prior patent application’s application elements. Where an applicant files a further application based on a prior invention application or utility model application, he/she may claim for the priority right in respect of the invention or creation along with his/her prior patent application within twelve (12) months from the filing date of the prior patent application. For a patent application claiming for its priority, the priority date shall be used as a reference date during the patentability examination.

然國內優先權不可累積主張，先申請案已主張國內優先權或國際優先權之部分，不得於後申請案中主張國內優先權。先申請案分割之子案或改請案亦不得再被另一案主張國內優先權，但分割後存續之原申請案不在此限。若先申請案被已公告、被審定不予專利、已撤回或被智慧財產局處分不受理時，則不可作為國內優先權的基礎案。

一申請案主張國內優先權之後，先申請案將自後申請案申請日後滿15個月，視為撤回，以避免重覆公開以及審查 。即使後申請案僅就先申請案的部分主張優先權，該先申請案仍全部被視為撤回，若要保留先申請案未被主張國內優先權的部分，須於主張優先權前，先對先申請案提出分割申請。

However you cannot accumulate its domestic priority claim especially for its application which has been used for its domestic or international priority claim nor to use the later patent application for its prior patent application. For its divisional application, you cannot use this as another case to claim for its domestic priority right; however exception applies if such division coexists with the prior patent application. However if such prior patent application is published and it was determined not to grant such patent, be withdrawn, or if such application is rejected on procedural grounds or on the ground of the ineligibility of the applicant, such prior patent application cannot be used as domestic priority right application.

-where claiming for such priority is made and the examination decision has been made in respect of the prior patent application, such application shall be deemed to be withdrawn after 15 months from its filing date to avoid repetitive disclosure and examination. Even the later application claim for its priority right for its prior application, such application shall be deemed to be withdrawn. If you wish to preserve the part that has not claim for its domestic priority right for its prior patent application, prior to such priority claim, you would need to lodge a divisional application to do so.

參考資料：

專利法逐條釋義

專利審查基準

經濟部智慧財產局https://www.tipo.gov.tw/mp.asp?mp=1

References:

Step by Step interpretation of Patent Law

Patent Examination Guidelines

Intellectual Property Office <https://www.tipo.gov.tw/mp.asp?mp=1>

簡介專利申請案檢索報告 / 專利工程師 林孟萱

Brief Introduction for its search report which is published together with the application / Patent Engineer Meng-Xuan Lin

一.檢索報告之目的

The purpose for search report

專利申請案檢索報告是用來記錄實體審查的過程中，審查人員認為與申請案請求項相關之文獻段落，關聯之程度與種類會使用關聯性代表加以標註。檢索報告無須申請，通常該報告會與「審查意見通知函」或「核准審定書」一同寄給專利申請人。

The search report which is published together with the application is to record the process of substantial examination. The examiner will consider whether its patent applicant is relevant by looking at relevant claims. The degree of relevance and its patent types would be marked with its associated representatives. Under general circumstances, such report and “observation of the examination” or “Approved Examination Report” would be sent to the patent applicant at once.

二.何時不會有檢索報告

When there is no search report?

當申請案之全部請求項或部分請求項有下列情事者，會先以「審查意見通知函」通知申請人，待申請人於期限內提出可排除下列情事之申復說明或修正說明書後，才會於後續審查程序檢附檢索報告，否則將直接進行審定。

When it comes to patent application requesting to review all or partial items as follows, the Patent Authority may, in the course of examining an invention patent application, notify its patent applicant with a “observation of the examination” to make a supplement or amendment to the specification and/or drawings within a specified time limit, otherwise such application would go directly to its examination process without any follow up search report.

發明為非利用自然法則之技術思想之創作者。（專利法第21條）The term “invention” is used herein refers to any creation of technical concepts by utilizing the rules of nature (Patent Act Article 21).

為專利法規定不予發明專利者。（專利法第24條各款）Items shall not be granted an invention patent according to its Patent Act. (Patent Act Article 21 listed items).

專利說明書發明說明未明確且充分揭露發明技術特徵內容，導致無法瞭解發明內容者。(專利法第26條第1項) If the description of invention did not contain a sufficiently clear information and have not disclosed its contents completely, in result not to understand its contents fully (Patent Act Article 26, Paragraph 1).

為非可供產業上利用之發明者。(專利法第22條) An invention which is not industrially applicable (Patent Act Article 22).

與另一發明或新型專利申請案為相同之發明。(專利法第31條) if such patent application is identical for another Invention patents or Utility model patents (Patent Act Article 31).

不符發明單一性規定者。(專利法第33條) Not consistent with its exclusiveness requirement (Patent Act Article 33).

實質上非為兩個以上之發明而為分割申請，該分割案以不符分割之實體要件處分不准分割時。(專利法第33條) In the case of a patent application which substantially involves two or more inventions, such division does not satisfy the division requirement and decided not to divide its patent application into two or more separate divisional applications (Patent Act Article 33).

申請專利所為說明書、申請專利範圍或圖式之修正內容，超出申請時原說明書或圖式所揭露之範圍者。（專利法第43條第2項）For its patent application especially when interpreting the scope of claims, the description and drawings, when such application exceed the scope of contents as disclosed in the original specification and drawings submitted along with the patent application (Patent Act Article 43, Paragraph 2).

此外，檢索報告是實體審查制度下的產物，故未經實體審查之新型專利，不會有專利申請案檢索報告。

In addition, such search report is the product of substantive examination; therefore if its utility model did not go through its official substantive examination, there won’t be any search report on its patent applications.

三. 關聯性代碼之意義

Relevant Codes and its meaning

關聯性代碼通常會在專利申請案檢索報告最下方作說明，代碼意義如下：

Relevant codes would usually

代碼X：單獨引用即足以否定發明新穎性或進步性之特別相關文獻。

“X” indicates that a single document is particularly relevant for reasons of novelty.

代碼Y：結合一篇或多篇其他文獻下，足以否定發明進步性之特別相關文獻。

“Y” indicates document particularly relevant if combined with another “Y” document.

代碼A：顯示一般技術水平而不能否定發明新穎性或進步性之文獻。

“A” used for a document representing “state of the art not prejudicial to the novelty or inventive step of the claimed invention

代碼D：申請案之說明書中已記載之文獻。

“D” represents document cited in the application.

代碼E：申請在先、公開/公告在後之本國專利文獻。

“E” represents when there is potentially conflicting patent documents, for which documents bearing a filing or propriety date earlier than the filing date of the application searched but published later than that date and the content of which would constitute prior art relevant to novelty.

代碼O：關於口頭揭露、公開使用、販賣或展覽陳列之文獻。

“O” represents non-written disclosure such or oral revealed、public use、sell or exhibit display of literature.

代碼P：介於申請日與優先權日間公開之文獻。

“P” represents documents published on dates falling between the date of filing of the application being examined and the date of priority claimed, or the earliest priority if there is more than one.

代碼L：其他理由所引用之文獻。如違反專利法第31條規定先申請原則及一案兩請之專利文獻及其他文獻。

“L” represents documents cited for other reasons. For example if you breached its Patent Law Article 31 when two or more applications are filed for the same invention only the application filed first may be granted an invention patent.

四. 結語

4. Conclusion

由專利申請案檢索報告可看出審查人員對該專利申請案是否具可專利性之意見。於申復答辯時，須根據檢索報告所列出之不具新穎性、進步性或其他不具專利性之相關項目文獻進行分析、提出資料佐證或修改申請專利範圍，來使得專利申請案符合「新穎性」、「進步性」、「擬制喪失新穎性」與「先申請原則」。

According to the search report which is published together with the application, we can know whether patent examiners have any opinions toward its patent application. This is especially important when filing a statement of defense; you need to provide all the evidences or to make a supplement or amendment to the specification and/or drawings within a specified time limit to counter examiner’s queries in terms of their concerns that lacks novelty, progressive or any other claiming that its examiner think should be excluded from its specification in order to fulfill its patent application requirement of novelty、progressive、loss of novelty function or first application principle.

參考資料：

專利法逐條釋義

專利審查基準

經濟部智慧財產局 專利Q&A

https://www.tipo.gov.tw/lp.asp?CtNode=7633&CtUnit=3732&BaseDSD=7&mp=1

References:

Step by Step interpretation of Patent Law

Patent Examination Guidelines

Intellectual Property Office Patent Q&A

https://www.tipo.gov.tw/lp.asp?CtNode=7633&CtUnit=3732&BaseDSD=7&mp=1

Zoomlaw Attorneys-at-Law　Invention Patent、Utility Model Patent、Design Patent 

 Written by: Patent Engineer Meng-Xuan Lin

Attorney-at-Law 

Patent Act Article 2:

The term “patent” referred to in this Act is classified into the following three categories:

1.Invention patents’

2.Utility model patents; and

3.Design patents.

The definition for Invention Patents is being defined under Patent Act Article 21:

The term “invention” as used herein refers to any creation of technical concepts by utilizing the rules of nature.

The definition for Utility Model Patents is being defined under Patent Act Article 104:

The term “utility model” refers to any creation of technical concepts by utilizing the acts of nature, in respect of the form, construction or installation of an article.

The definition for Design Patents is being defined under Patent Act Article 121:

The term “design” refers to any creation made in respect of the shape, pattern, color, or combination thereof of an article through eye appeal.

According to the patent’s definition, you can distinguish Design Patent from the Invention Patent and Utility Model Patent, however the Invention Patent and Utility Model Patent here refers to any creation of technical concepts by utilizing the rules of nature. Question arises as to the real difference between the two.

According to the Intellectual Property Office’s website relating to Patents’ Q&A “Are there standard forms for filing patent applications?” In this article mentioned that: “Both the Invention Patent and Utility Model Patent herein refers to any creation of technical concepts by utilizing the rules of nature, which focuses on its improvement in terms of its function, technology, manufacture and ease of use. However there is a broader definition for Invention Patent, including substance (without space patterns) 、item (with certain space patterns) 、methods, biological materials and its purposes; whereas the Utility Model Patent only covers for the shape items、creative construction or combination in creativity. Therefore, you can realize that the subject matter for the Invention Patent is broader versus the Utility Model Patent is more limited in terms of its coverage.

Nevertheless, there are differences in terms of its ways of examination and patent terms for invention patent and utility model patent. The invention patent would need to conduct substantive examination and usually such examination would take a long time. However the term for an invention patent right shall ends with twenty (20) years from the filing date of the patent application, which is comparatively longer than other patent types. Whereas the utility model would only require formality examination, the time frame for its examination and its patent right is also shorter. The duration of a utility model patent right shall be ten (10) years from the filing date of the patent application. Sometimes the requirement for its patent application would be the same for its invention patent and utility model patent, therefore it is up to the applicant to evaluate its situation and to determine whether they need such patent right sooner or later, and how long they need its duration for patent right for in order to determine which type of patent to apply.

The following is a comparison table for three different types of patents namely invention patent, utility model patent and design patent:

The Glass Industry for example, please see the below diagram, if its technical content for its glass product is based on “process or material innovation”, applicant should apply for invention patents; whereas if its technical content for its glass product is based on “structure features”, applicant should apply for utility model patent; if its technical content for its glass product is based on “unique appearance”, applicant should apply for design patent.

References:

Intellectual Property Office https://www.tipo.gov.tw/mp.asp?mp=1

Intellectual Property Office Patent’s Q&A https://www.tipo.gov.tw/lp.asp?CtNode=7633&CtUnit=3732&BaseDSD=7&mp=1

Patent Act——Case type fifth edition revised by Chew-Fu Lin 

Ÿ   Innovation protection:

ž  - Safeguarding and creating value for one’s invention: the win-rate of plaintiffs in civil

    infringement cases went up to 25% in 2014.

ž   -Increasing the applicants’ competitiveness.

ž   -Reducing the danger of being accused of patent infringement.

Ÿ   TIPO’s efficient and convenient services:

ž  - Impressive patent examination speed: average pendency of first office action was

    lowered to 21.16 months and is still being shortened.

ž   -Impressive examination quality: only 6.9% of patent administrative litigation cases

    were revoked in 2014.

ž   -Provides an in-person service: allows applicants to gain expert opinions

ž   -Established a communication-related patent database.

Ÿ   Will be eligible for fee reduction:

ž   -Applicants providing an additional abstract of their patent applications in English.

ž   -Applicants filing patent applications online.

Ÿ   Will be eligible for tax deduction:

ž   -Right holders obtaining stocks from companies in exchange for their patent rights may

    have their tax deferred until the sale of said stocks.

 * Reference source: Gaining a Competitive Edge with Taiwan Patents, TIPO, May 11, 2015.

From: Benjamine Medeville

Date: December 1^st, 2014

Topic: 3D printers and their relation to IP

3D printing was first developed in the 1980s. Indeed, Chuck Hull invented the process of stereolithography in 1984 in which layers are added by curing photopolymers with UV lasers. The main patent protecting a specific type of 3D printer expired beginning of February 2014 which allowed a decrease in costs and allowed the general public to have access to this revolutionary technology for an average price of USD1,500 (printers range from just under USD1,000 to over USD3,000). The mainstream 3D printer will read computer-aided design (CAD), similar to a blueprint, and build the object layer by layer out of a given material – usually plastic or metal. This newly spread invention allows the general public to have an easier and cheaper access to a multitude of objects ranging from fashion items like rings or necklaces to more technical ones like a computer fan cooler. Its reduction in the costs of designing, manufacturing and distributing is what made it so appealing to the general public. It also permits people to customize and/or build unique objects. However, the booming number of users has made different issues arose, particularly with regards to the intellectual property (IP) field.

According to Ben Depoorter, “3D printing makes the infringement of IP rights cheaper and more attractive”. Naturally, apart from designing original products, users are likely to print items protected by IP rights without authorization; whether it is intentional or unintentional, it still amounts to infringement of IP rights. Blueprints for such products are easily found for free online. Those infringements are mainly related to trademark, copyright and patent. Undeniably, the sale of a trademarked product might infringes the rights of a trademark owner; and like many counterfeit product, 3D printing users might just reproduce the object without a logo to counter such infringement. With regards to copyright, the issue lays in the design of the product itself. 3D printing enables personal manufacturing of copyrighted objects in the home which makes it undetectable, thus hard to control and prevent. Copyright protects the artistic aspect of a product and not its usefulness. Depoorter used in his article the example of a coat hanger. Despite from being useful, the coat hanger could also be subject to copyright law if it has decorative elements such as colorful drawing, specific designs etc. The functional aspect of an object is subject to patent regulation and reproducing it will be an infringement on such law. We can use the example of a cellphone stand to highlight the different IP infringements that can be present when 3D printing it. If someone creates a design for a unique cellphone stand and shares it on a platform like Thingiverse.com, no IP issue arises. However, if that person creates a blueprint design for an existing item (or with an existing trademark) then shares it on the platform, which in turn allows users to 3D print the item; it creates an IP law infringement. Indeed, even if the object does not exist but its aspects include marks of a trademarked brand, it is infringing trademark regulations. This was the case when a fan of the HBO TV show Games of Thrones built a stand representing the series’ famous Iron Throne.

What are the possible defenses available to rights’ holders when such issues are present? We have to remember this topic is still very fresh as the booming of 3D printing only appeared in the past year and all the issues have not been yet unveiled. Undeniably, it is difficult for the law to apply rules to a completely new issue, and even more complicated to create customize regulation on an issue that has not been fully developed yet. For trademark owners, it is difficult to enforce their rights as the mere removal of the logo can allow a curve around the law. Moreover, the plaintiff needs to demonstrate the alleged infringer has used the trademark in commerce instead of a personal use. However, if a person copies a copyrighted object, the copyright owner has the ability to sue for copyright infringement. The Digital Millennium Copyright Act (DMCA) allows copyright owners to issue takedown notices to providers like Thingiverse.com; the latter is most likely to comply with in order to avoid liability. The main problem here is, the providers are not required to search their websites for infringing materials; thus, the copyright owner has to police his own rights which can be tricky given the high number of blueprints available on the Internet. As for patent holders, who carry the burden of proof, it will be difficult to show the alleged infringer had the knowledge that the produced object was subject to a specific patent. Thus, according to Bryan J. Vogel, “consumer use of 3D printers may create multiple instances of patent infringement, policing and protecting patent rights in inventions copied on 3D printers may present significant challenges for patent holders.”

Although possible remedies exist, the main issue remains the decentralization of 3D printing. It is an act done in the comfort of one’s home and not on display in a window shop. Although high scale solution has yet to be found, the general public does not wish for a new scandal similar to the peer-to-peer litigation campaign. Indeed, the aggressive measures to enforce copyright law that was perceived as targeting college students against illegal downloading of music and videos, has been highly criticized and condemned as arbitrary and excessive. Alternatively, right holders can copy what copyright owners are doing today and stem CAD files by targeting distributors using what Geeta Dayal calls “algorithmic enforcement”. This is where a “bots” filters the Internet researching infringing content instead of using human spotters. Despite being cheaper than human spotters, using an “algorithmic enforcement” will be prone to more errors.

        In the wake of a new technology revolution, 3D printing users hope for a new legal framework that will both allow the development and free sharing of blueprints as well as the protection of IP rights that will encourage designers to create even wider ranges of products.

Sources:

l   Intellectual Property Infringements & 3D Printing: Decentralized Piracy – Ben Depoorter, August 2014

l   3D Printing: Overcoming the Legal and Intellectual Property Issues – Erin Carson, August 1, 2014

l   “Intellectual Property Issues Stacking up for 3D Printing” – Douglas R. Nemec & Kristen Voonrhees, October 2, 2014

l   The next big fight: 3D printing and intellectual property – Melissa A. Barnett, January 31, 2014

According to the Taiwan Patent Act (2011), an invention means “the creation of technical ideas, utilizing the laws of nature.”  An industrially applicable invention may be granted a patent if a properly filed application satisfies the requirements of the Patent Law. 

However, if an invention was disclosed in a publication, publicly exploited or publicly known prior to the filing of the patent application, the patent claim may be disallowed, except when the concerned patent application is filed within six months of the following events: The invention was (1) publicly disclosed as a result of conducting a test; (2) disclosed in a publication; (3) displayed at an exhibition held or recognized by the Government; (4) disclosed without the consent of the applicant.

An applicant wishing to claim exemptions under the aforementioned circumstances (events 1 to 3) should state the fact and the relevant date at the time of filing the patent application and submit evidentiary documents.

In addition, certain types of inventions are statutorily excluded from being granted a patent.  For example, animals, plants, and essential biological processes for the production of animals or plants are not patentable, but processes for producing microorganisms can be patented.  Furthermore, diagnostic, therapeutic and surgical methods for the treatment of humans or animals are not patentable.  Likewise, inventions contrary to public order or morality cannot be patented.

References:

Taiwan Patent Act (2011)

http://www.tipo.gov.tw/ch/NodeTree.aspx?path=43

http://www.tipo.gov.tw/en/AllInOne_Show.aspx?path=2531&guid=98c50f60-3afd-46ec-9a13-14289d2ba135&lang=en-us

If you are interested in protecting your invention in Taiwan, you should consider applying for a patent in Taiwan.  Even if you have previously obtained a patent for your invention in another country, you still need to apply for a patent in Taiwan if your ultimate goal is to protect your invention in Taiwan, because patent law is territorial and is granted by the national authority of a specific jurisdiction.  In other words, a patent issued by another country or jurisdiction is not valid in Taiwan.  Therefore, the best way to achieve your goal of protecting your invention in Taiwan is to file a patent application and successfully receive a patent in Taiwan.

A patent is a type of intellectual property right granted by the Government of Taiwan, Republic of China (R.O.C.) to an inventor to exclude others from making or selling the invention in Taiwan or importing the invention into Taiwan.  The Patent Act (amended in 2011) is the current law that deals with patent application, patentability, substantive examination, claim of priority, re-examination, and various other patent-related issues.

According to the Patent Act (2011), the term “patent” can be classified into three categories: (1) invention patents, (2) utility model patents and (3) design patents.  To successfully receive a patent from the Taiwan Intellectual Property Office (TIPO), a patent application must satisfy the statutory requirements of patentability.  An applicant may designate a patent agent or patent attorney to file patent applications or handle patent-related matters on his or her behalf.

References:

Taiwan Patent Act (2011)

http://www.tipo.gov.tw/ch/NodeTree.aspx?path=43

http://www.tipo.gov.tw/en/AllInOne_Show.aspx?path=2531&guid=98c50f60-3afd-46ec-9a13-14289d2ba135&lang=en-us