Utiliy Models (Question 39~45)

Question 39. Can you file the same claims in the utility model and a utility patent?

Answer: No. 


Question 40. What are the differences in the enforceability between a utility model and a utility patent?

Answer:  Basically, there is no difference therebetween except a utility model needs an official technical report in advance.


Question 41. When can one file a utility model?

Answer:  On or before the date of filing the utility patent.


Question 42. Does it need to be a divisional of a utility patent or can the utility patent and the utility model be filed concurrently?

Answer:  A utility model can either be converted from a divisional of a utility patent or be filed concurrently with the utility patent where the former route is more expensive because of two procedures.


Question 43. Is there a preferred or required form of claims in a utility model? 

Answer:  Except a method, compound or composition, a utility model can claim anything a utility patent can claim.


Question 44. Can functional language be used in the claims (for example, "a device configured to" [do something])? 

Answer: Yes.


Question 45. How can the connecting relationships between the claim elements be defined? Is it acceptable to recite claim elements that are "in communication with" each other? Or do the elements need to be "connected to" each other?

Answer:  The phrase "in communication with" is acceptable in the claim in a utility model.


Design Patents (Question 46)

Question 46. Is there protection for design patents? 

Answer:  Yes.


Enforecement (Question 47~50)

Question 47. Are there procedures for discovery in a civil proceeding? 

Answer:  Yes, but not in the strict sense as that in the US. Specifically, we have the preparatory stage within which both parties should submit or produce evidence. Nevertheless, a later submission before the conclusion of the oral debate is always acceptable.


Question 48. How long is the approximate court backlog for IP litigation?

Answer: Since the IP court is just running from July 1, 2008, it is reported they do not receive that many IP litigation cases as anticipated. A 6-month period for each instance for an average case should be a good estimation.


Question 49. What are the damages that can be recovered for an IP litigation, and how are they assessed (e.g. treble damages)?  

Answer:  Under our Patent Law, Article 85 provides about Damages as follows: "Upon claiming damages under the preceding Article, any of the following items may be selected to calculate the loss:

1. Pursuant to the provision of Article 216 of the Civil Code, provided the invention patentee may take the difference of subtracting the profit normally acquirable through his practicing patent right by the gained profit of practicing the same patent right after infringement as the suffered loss if unable to provide evidence means to prove its losses;

2. Pursuant to, through the infringing act, the infringer’s gained profit which shall be the overall revenue of selling said article when the infringer is unable to prove its costs or necessary expenses;

Except provision in the preceding paragraph, an invention patentee may additionally claim appropriate compensation for business reputation abated through infringement. The court may award compensation in the preceding two paragraphs over the loss amount, depending on the infringing circumstance if the infringing act is intentional, provided the awarded compensation shall not exceed three times of the loss amount."


Question 50. Can the prevailing party received payment for legal fees? 

Answer:  No.