Lawyer Monthly - December 2024

issued by the EPO, JPO, or USPTO, (3) the invention is essential to commercial use, or (4) the invention involves green technology. For designs, a current acceleration pilot program is available if (1) a third party is commercially using the design, (2) the design is owned by a start-up, or (3) the design won an award, such as the iF Product Design Award, Red Dot Design Award, Good Design Award, Golden Pin Design Award, or International Design Excellence Award. A delay examination system is also available for applicants wishing to slow the patent grant process. Applicants may postpone invention patent examinations by up to three years and design patent examination by up to one year if requested at filing. Technical Evaluation Report for Utility Models To enforce a utility model, the right holder must present a technical evaluation report (TER). A TER is an analytical assessment to ensure the validity of a utility model, which proceeds to grant before substantive examination. In a recent case, the court emphasized that a TER cannot be replaced by an infringement report, since the latter is based on the assumption of patent validity. Therefore, the two are conceptually different and not interchangeable. According to the Patent Act, a warning notice must be served to a counterparty accompanied by a TER, or the warning risks violating the Fair Trade Act. WWW.LAWYER-MONTHLY.COM 45 Contact Tsai Lee & Chen Patent Attorneys & Attorneys at Law 11th floor, 148 Songjiang Road, Taipei 104, Taiwan Email: info@tsailee.com.tw Tel: 886-2-2571-0150 Fax: 886-2-2562-9103 www.tsailee.com.tw Kevin C.W. Feng Biotechnology & Pharmaceutical - Patent Attorney - Deputy Chief of International Marketing Division national phase. An applicant from a WTO member country or a resident who files first in another country can claim priority within 12 months for inventions and six months for designs. If priority expires, applicants can still file in Taiwan, so long as there is no publication for the same matters that would serve as an immediate novelty or inventiveness bar. Acceleration and Delay Taiwan has bilateral Patent Prosecution Highway (PPH) agreements with the U.S., Japan, Spain, Korea, Poland, and Canada. An allowed foreign application from one of these countries enables applicants to accelerate a Taiwanese counterpart application of similar or narrower claimed scope. Where the PPH is unavailable, Taiwan’s own Accelerated Examination Program (AEP) offers another option. AEP applies if (1) a foreign counterpart has been allowed by a foreign patent authority, (2) an office action has been

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