Chapter 3 Utility Model Patent

Article 104 Definition of utility model
"Utility model" means the creation of technical ideas relating to the shape or structure of an article or combination of articles, utilizing the laws of nature.

Article 105 Statutory exclusion
A utility model patent shall not be granted in respect of utility model which is contrary to public order or morality.

Article 106 Filing date
An application for a utility model patent shall be filed with the Specific Patent Agency by the person entitled to applying for patent by submitting a request, a description, claim(s), an abstract, and drawing(s).
The filing date of a utility model patent application shall be the date on which the request, description, claim(s), and drawing(s) are submitted in full.
Where an applicant does not submit a description, claim(s) and drawing(s) in Chinese at the time of filing, but in a foreign language, and where the Chinese translation for the said documents is submitted within the time limit specified by the Specific Patent Agency, the filing date shall be the date on which the foreign language version were originally submitted.
Where the Chinese translation is not submitted within the specified time limit as stated in the preceding paragraph, the patent application shall be dismissed; however, if the Chinese translation is filed prior to the dismissal decision is received, the date on which the Chinese translation is filed shall be regarded as the filing date, and the foreign language version shall be deemed not having been submitted.

Article 107 Division of application
For a utility model patent application which substantially contains two or more utility models, the said utility model patent application may, upon notice by the Specific Patent Agency or upon request by the applicant, be divided into two or more divisional applications.
A divisional application shall be filed before a decision on the original utility model application is rendered.

Article 108 Conversion of application
Where a patent application originally filed for invention or design patent is converted into a utility model patent application, or where a patent application originally filed for utility model patent is converted into an invention patent application, the filing date of the converted patent application shall be deemed to have the filing date of the original patent application.
An application for patent conversion shall not be applied under any of the following circumstances:
1. where a written decision allowing the original patent application has been served;
2. where two months have elapsed after serving a decision rejecting the original invention or design patent application;
3. where thirty days have elapsed since serving a decision rejecting the original utility model patent application.
A converted patent application shall not extend beyond the scope of content of the description, claim(s), or drawing(s) of the original patent application as filed.

Article 109 Amendment of application
When conducting the formality examination of a utility model patent application, the Specific Patent Agency may, upon request or on its own initiative, notify the applicant to amend the description, claim(s) or drawings within a specified time limit.

Article 110 Foreign language documents
Where a utility model patent applicant submits a description, claim(s), and drawings prepared in a foreign language under Paragraph 3 of Article 106, such foreign language documents shall not be amended.
The Chinese translation submitted under Paragraph 3 of Article 106 shall not extend beyond the scope of content of the original foreign language documents as filed.

Article 111 Decision of application
Upon completion of the formality examination of a utility model patent application, a written decision shall be rendered and served on the applicant.
When a utility model patent application is determined to be unpatentable, the reason(s) shall be given in the written decision of formality examination.

Article 112 Formality examination
Through formality examination, a utility model patent application shall be rejected under any of the following circumstances:
1. where the utility model does not relate to the shape, or structure of an article or combination of articles;
2. where there is a violation of Article 105;
3. where there is a violation of Paragraph 4 of Article 26, applicable mutatis mutandis under Article 120 of this Act;
4. where there is a violation of Article 33, applicable mutatis mutandis under Article 120 of this Act;
5. where the description, claim(s), or drawing(s) does (do) not disclose the essential matters that need to be disclosed, or the disclosure therein is obviously unclear;
6. where an amendment obviously extends beyond the scope of content of the description, claim(s) or drawing(s) as filed.

Article 113 Grant of patent; publication
Where, through formality examination, a claimed utility model shall be patented if there is no reason for negating its patentability, and the claim(s) and the drawing(s) of the patent application shall be published.

Article 114 Term of patent
The term of a utility model patent shall expire after a period of ten years from the filing date of the patent application.

Article 115 Request of technical report
After a utility model patent application is published, any person may file a request with the Specific Patent Agency for obtaining a utility model patent technical report.
The Specific Patent Agency shall publish in the Patent Gazette the fact that the request for obtaining the utility model patent technical report has been filed.
The Specific Patent Agency shall assign a patent examiner to issue the utility model patent technical report, and the report shall bear the name of the above-mentioned examiner.
For request filed under Paragraph 1, the Specific Patent Agency shall issue the utility model patent technical report with respect to matters set forth in Subparagraph 1, Paragraph 1 and Paragraph 2 of Article 22, applicable mutatis mutandis under Article 120, Article 23, applicable mutatis mutandis under Article 120, and Article 31, applicable mutatis mutandis under Article 120.
For request in obtaining the utility model patent technical evaluation report as filed under Paragraph 1, if it is stated in the request that commercial exploit of the utility model patent is made by a party other than the patentee and if supporting evidence is submitted, the Specific Patent Agency shall issue the utility model patent technical report within six months.
Request for obtaining a utility model patent technical evaluation report can still be filed after the utility model patent has become extinguished.
Request filed in accordance with Paragraph 1 shall not be withdrawn.

Article 116 Presentation of technical report
When exercising a utility model patent, the patentee shall present a utility model patent technical report as warning.

Article 117 Liability of damages; immunity
Where a utility model patent is invalidated, the patentee shall be liable for compensating damages suffered by another person due to the patentee’s exercise of his/her utility model patent prior to the patent invalidation. The above shall not apply if the exercised utility model patent is based on the content of the utility model patent technical report and the patentee has exercised his/her patent with due care.
Through formality examination, a decision rejecting the patent amendment shall be rejected under any of the following circumstances:
1. where there is an event prescribed in Subparagraphs 1 to 5 of Article 112;
2. where the amendment obviously extends beyond the scope of content of the claim(s) or drawing(s) as published.

Article 118 Amendment of granted patent
With respect to examination of a request for patent amendment, except for the situation set forth in Paragraph 1 of Article 77, applicable mutatis mutandis under Article 120 of this Act, the Specific Patent Agency shall conduct formality examination of the patent amendment, issue a decision and serve it on the patentee.
The scope of a utility model patent shall be determined based on the claim(s) set forth in the specification of the patented utility model. When interpreting the scope of claims, the description and drawings of the utility model patent may be used as reference.

Article 119 Grounds of invalidation
Any person may request for invalidation against a utility model patent with the Specific Patent Agency under any of the following circumstances:
1. where there is a violation of Article 104, Article 105, Paragraph 3 of Article 108, Paragraph 2 of Article 110, Article 22 applicable mutatis mutandis under Article 120, Article 23 applicable mutatis mutandis under Article 120, Article 26 applicable mutatis mutandis under Article 120, Article 31 applicable mutatis mutandis under Article 120, Paragraph 4 of Article 34 applicable mutatis mutandis under Article 120, Paragraph 2 of Article 43 applicable mutatis mutandis under Article 120, Paragraph 3 of Article 44 applicable mutatis mutandis under Article 120, Paragraphs 2 to 4 of Article 67 applicable mutatis mutandis under Article 120 of this Act;
2. where the home country of the patentee does not accept the patent applications filed by nationals of the ROC;
3. where there is a violation of Paragraph 1 of Article 12, or where the utility model patentee is not entitled to file the utility model patent application.
An invalidation request based on Subparagraph 3 of the preceding paragraph shall only be filed by the interested party.
With respect to ground(s) of an invalidation request against a utility model patent, the provisions in effect at the time of said patent approved shall govern. However, if an invalidation request is filed based on the ground(s) under Paragraph 3 of Article 108, Paragraph 4 of Article 34 applicable mutatis mutandis under Article 120, Paragraph 2 of Article 43 applicable mutatis mutandis under Article 120, or Paragraph 2 and paragraph 4 of Article 67 applicable mutatis mutandis under Article 120, the provisions in effect at the time of filing said request shall govern.
A written decision on an invalidation request shall bear the names of the patent examiners.

Article 120 Provisions applied mutatis mutandis to utility model patent
Article 22, Article 23, Article 26, Articles 28 to 31, Article 33, Paragraphs 3 and 4 of Article 34, Article 35, Paragraphs 2 and 3 of Article 43, Paragraph 3 of Article 44, Paragraph 2 of Article 46, Paragraph 2 of Article 47, Article 51, Paragraphs 1, 2 and 4 of Article 52, Paragraphs 1, 2, 4 and 5 of Article 58, Article 59, Articles 62 to 65, Article 67, Paragraphs 2 and 3 of Article 68, Article 69, Article 70, Articles 72 to 82, Articles 84 to 98, and Articles 100 to 103 of this Act shall apply mutatis mutandis to utility model patent.