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Patent maintaining and premature expiration of utility models in Taiwan
World Patent Information xxx (2014) 1e5
Contents lists available at ScienceDirect
World Patent Information journal homepage: www.elsevier.com/locate/worpatin
Patent maintaining and premature expiration of utility models in Taiwan Rain Chen*, Chia-Ling Feng, Kuan-Wei Chen Department of Creative Product Design, Southern Taiwan University of Science and Technology, No. 1, Nan-Tai Street, Yongkang Dist., Tainan City 710, Taiwan, ROC
a b s t r a c t Keywords: Utility models International patent classification Patent renewal rate Patent expiration rate Taiwan
The most commonly seen patents are invention patents, utility models and design patents. Among them, utility models are the most controversial type. The purpose of utility models is to quickly protect creations of lower technological levels or with a shorter life cycle. Nonetheless, the most optimal length of the term of utility models remains an open question. Utility models in Taiwan are the focus of this study, and International Patent Classification (IPC) was used here for the random sampling of the utility models. The investigators discussed the granting of the utility model and the expiring of utility models prematurely in Taiwan over the past ten years (2003e2012). The results suggest that compared to other sections, Section A (human necessities) and Section E (fixed constructions) of IPC have a shorter term of utility model maintaining. Aside from a higher expiration rate, their utility model terms are on average just over 3 years. As for the Section H (electricity) and Section C (chemistry, metallurgy), their utility model terms are slightly longer than those of other utility model sections and the number of renewed cases are also greater. In addition to a lower expiration rate, the utility model terms of these two sections are sometimes longer than five years. The study results can perhaps also be used as a reference by countries interested in introducing the utility model for determining the term of utility models. Ó 2014 Elsevier Ltd. All rights reserved.
1. Introduction Among nations with a patent system, most of them protect invention patents, but not many of them include the utility model. Taking the USA as an example, patents under US patent law are classified into three types: utility patents, design patents and plant patents [1]. According to Beneito [2], utility patents can be further divided into patents and utility models. The three most commonly used patent types by countries worldwide are invention patents, utility models, and design patents. The utility model is the most controversial one. The purpose of invention patents is to protect technological inventions, while the purpose of design patents is to protect the style and appearance of a creation. After a long evolvement, these two types of patents are relatively stable in terms of the examining system. The position of the utility model, however, is ambiguous. Countries with the utility model system use it to quickly protect simple technological inventions by granting the right rapidly. Taiwan as an example, patent
* Corresponding author. Tel.: þ886 6 253 3131x8107; fax: þ886 6 301 0020. E-mail addresses: [email protected], [email protected] (R. Chen).
types include Invention Patent, Utility Model, and Design Patent. Table 1 shows the three types of patents in Taiwan and their features. Germany introduced its utility model law [3] in 1891, becoming the first country adopting the utility model among industrial countries in Europe. The objective of the utility model is to quickly protect creations with a lower technological level and a shorter life cycle [4e6]. In other words, the utility model has a shorter examination process [7]. Although Trade-Related Aspects of Intellectual Property Rights (TRIPs) does not cover the utility model, the majority of countries worldwide have still established a utility model system based on the features of their industries. For example, Brazil, China, Germany, Korea, Netherlands, and Taiwan all use the utility model to protect the domestic industries [8e13]. According to the patent law in Taiwan, a utility model is the creation of technical ideas relating to the shape or structure of an article or combination of articles, utilizing the laws of nature. The term of a utility model shall expire after a period of ten (10) years starting from the filing date [14]. Only articles with a shape and structure or assemblies of these articles are eligible for utility model applications. Manufacturing methods, application methods,
http://dx.doi.org/10.1016/j.wpi.2014.03.003 0172-2190/Ó 2014 Elsevier Ltd. All rights reserved.
Please cite this article in press as: Chen R, et al., Patent maintaining and premature expiration of utility models in Taiwan, World Patent Information (2014), http://dx.doi.org/10.1016/j.wpi.2014.03.003
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R. Chen et al. / World Patent Information xxx (2014) 1e5
Table 1 Types and features of patents in Taiwan. Patent type
Invention patent
Utility model
Design patent
Patent examination
Substantive examination system Higher technological creations Industrially applicable, novelty, and non-obviousness 18e36 months
Formality examination system Lower technological creations Industrially applicable, novelty, and non-obviousness 4e6 months
Substantive examination system Appearance and style related creations Industrially applicable, novelty, and creativity 12e18 months
20 years
10 years
12 years
Targets of protection Patentability requirements
Time for the examination Patent protection term
treatment methods of articles and chemicals or chemical compounds without a specific volume or shape are not qualified for the utility model, and thus they are not eligible for utility model applications. The patent protection term varies among countries depending on the type of patents and the industrial development. Nevertheless, many patent holders do not wait until the end of the term but voluntarily renounce the patent at any time to stop paying for the patent maintenance fee. After implementing patent law, the government can revise the law according to the condition of the industries. For example, Japan revised its patent law in 2006 to extend the patent term. The term of patent protection can be prolonged according to the life cycle of the product after commercializing the patent as well as the public’s need for patent right extension [15]. During the revision of the patent law in 2013, Taiwan also proposed regulations and procedure for extending the term of patents, especially for pharmaceutical products and other articles requiring a longer research and development period. On February 6, 2003, Taiwan revised its patent law to change the examination benchmark of the utility model from a substantive examination system to a formality examination system. This change impacted the innovation and patenting activities at universities in Taiwan [16]. A formality examination system means that the examination of a utility model application will be based on whether the specification, scope of the utility model for application, abstract, and figures meet the formal requirements. During the formality examination, there is neither prior art search nor substantive examination on whether the creation qualifies for the utility model requirements. An advantage of the formality examination is the shorter examination time, which allows applicants to obtain the utility model right faster. Although the term of protection for utility models is limited to ten years, products with a shorter life cycle, such as cell phones, tablet computers and other consumer electronics, can be quickly and conveniently protected. Nonetheless, the length of the utility model protection remains unsettled. In Taiwan, the majority of patent applications are for the utility models. In this study, the investigators chose utility models of Taiwan as the study samples. In Taiwan, the term of the utility models is ten years. In this study, patent sampling was based on International Patent Classification (IPC). The investigators explored the situations of the granting of utility models and premature expiration over the past ten years (2003e2012). The investigators also analyzed the term of utility models to discuss the ideal length of patent protection term of each patent class. The objectives of the
study are as follows. First, the main trend of the renewal and premature expiration of utility models in Taiwan over the past ten years is investigated and discussed. Second, renewal and expiration statistics were determined for each of the eight major sections of utility models by classifying the research samples based on the IPC. Third, among the eight sections, those with the shortest and the longest duration are to be analyzed, and possible explanations for the phenomenon will be offered. 2. Research samples To make the study more general, the investigators did the random sampling using International Patent Classification (IPC), which was established according to Strasbourg Agreement Concerning the International Patent Classification and enacted by World Intellectual Property Organization (WIPO). The earlier editions of IPC were application oriented, but in view of the global trends, the classification of the contents of patent technology in the latter IPC editions has been both functionality and application based. IPC has a hierarchical classification system, and mutually independent symbols are used to represent the patent technology of each domain. There are a total of six levelsdsections, subsections, classes, subclasses, groups, and subgroups. In this study, the random sampling was done at the section level only. A total of ten years (from 2003 to 2012) were included in the sampling in order to match with the ten-year utility model protection term. From 2003 to 2012, the investigators picked the first issued utility model on the first day of each month and included it in the study samples. From each section (Sections AeH), 120 utility models were randomly sampled, and in total, there were 960 cases. The study used each section to compute the ratio between utility model renewal and utility model expiration. The data can be used to explore if the premature expiration of utility models differs among the sections. 3. Validity and expiration rate of utility models in Taiwan The study analyzed the data based on the system sampling described above, and the results are presented in Table 2. Among a total of 960 randomly sampled cases, 507 of them were renewed cases (52.81%), while 453 of them were expired cases (47.19%). More specifically, Section A (N ¼ 69) and section E (N ¼ 67) had the highest number of expired cases, while Section C (N ¼ 43) had the lowest number of expired cases. To further examine the rate of total renewal, the total number of renewed cases of all sections, i.e., 507, was used as the denominator, while the number of renewed cases of each section was the numerator. Take Section A as an example, the number of renewed
Table 2 The renewal and the expiration rates of Sections AeH. Section
The number of cases of renewed (a)
The number of cases of expired (b)
The renewal rate (a/a þ b)
The expiration rate (b/a þ b)
A B C D E F G H Sum
51 65 66 71 53 62 62 77 507
69 55 54 49 67 58 58 43 453
0.42 0.54 0.55 0.59 0.44 0.52 0.52 0.64 0.53
0.58 0.46 0.45 0.41 0.56 0.48 0.48 0.36 0.47
Please cite this article in press as: Chen R, et al., Patent maintaining and premature expiration of utility models in Taiwan, World Patent Information (2014), http://dx.doi.org/10.1016/j.wpi.2014.03.003
R. Chen et al. / World Patent Information xxx (2014) 1e5
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Fig. 1. The total renewal rate of Sections AeH.
cases of Section A was 51, while the total renewed cases were 507, and therefore, the total renewal rate of Section A should be 51/ 507 ¼ 10.06%. Each section’s renewal rate was calculated as such (See Fig. 1). To further understand the expiration rate of each section, the study used the total number of expired cases, 453, as the denominator, and the number of expired cases of each section as the numerator. Take Section A as an example, the number of expired cases of Section A was 69, and because the total number of expired cases was 453, the total expiration rate of section A should be 69/ 453 ¼ 15.23%. For other sections, see Fig. 2. Another worth discussing type of data is the average expiration time of each section (unit ¼ years). For the utility model, the term is 10 years. The study calculated the number of valid years of expired utility models to find out the average valid duration of utility models from Section A to Section H (see Fig. 3). It can be found from Fig. 1 that Section A (10.06%) and Section E (10.45%) are the two with the lowest total renewal rate, and their average valid durations are the shortest too (3.07 years and 3.04 years respectively). This finding suggests that after acquiring the utility model right, industries of the two sections do not need a long utility model term. Section H (15.19%) and Section C (14.00%) are the two sections with the highest renewal rate, and the average rate of validity for Section H is 3.24 years and 3.39 years for Section C This finding indicates that, for these two
sections, industries require to maintain the utility models for a longer term. 4. Discussion and conclusion According to IPC classification, the granting of utility models and premature expiration of Taiwanese utility models of Sections AeH between 2003 and 2012 are discussed in this paper. Sections A and E have the shortest utility model maintaining term in contrast to other sections’, whereas Sections H and C not only have a higher term of utility model maintaining but also a greater number of renewed cases. Compared to other sections, Sections A and E have relatively a shorter term of utility model maintaining. The study showed that within ten years, Section A has many cases with a utility model term less than 3 years; only few of them are more than 5 years. Randomly sampled cases with a term less than 3 years were compared and the results showed that the majority of the utility models with a shorter renewed term are small articles, such as M298398, the little finger cup, and the structural improvement of three-level envelop-type digitally controlled electric blanket. As for Section E, its term for utility model maintaining is quite bipolar. In 2003, there were many Section E utility models with a utility model term less than a year. The investigators examined several randomly sampled Section E utility models with a less than one year of utility model term and found that these utility models were all structure
Fig. 2. The total expiration rate of Sections AeH.
Please cite this article in press as: Chen R, et al., Patent maintaining and premature expiration of utility models in Taiwan, World Patent Information (2014), http://dx.doi.org/10.1016/j.wpi.2014.03.003
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R. Chen et al. / World Patent Information xxx (2014) 1e5
Fig. 3. The average valid duration of utility models of Sections AeH.
related utility model, e.g., fault indicator lights (M277073), the structure of warning lights and road sign warning lights, and the voice-controlled electric window blind (M531026). It can be seen from the above-mentioned utility models with a shorter term of utility model maintaining that these products are likely to be gradually replaced by others due to a low irreplaceability. As a result, these utility models tend to last shorter. There are several cases where the utility model holders even voluntarily renounced their utility models at the year of the publication of the utility model. Compared to other sections, Sections H and C have a longer term of utility model maintaining and more renewed cases. Aside from a low expiration rate, the majority of the cases have a longer term of utility model maintaining (more than five years), and fewer of them have a term less than four years. Some examples here are the progressive type coagulation and sedimentation tank (M652382) and the top and bottom feeder of PCB electroplating equipment (M240452) of Section C, and the mobile communication device with call-back restriction (M242952) and the stair-type multilayer wireframe (M240057) of Section H. Because they are more likely to be the basic part of production chains, utility model holders are less likely to give up these utility models in Sections C and H. The investigators found that the duration of utility model maintaining and the classification of utility models (i.e., Sections AeH) are closely related. The maintenance fee charged for granted utility models may be involved as well. To promote an effective use of patents, many nations have stipulated a patent maintenance fee for maintaining a patent, and the patent fee increases substantially as the years of the patent increase. The principle here is to encourage patent holders to voluntarily renounce their patents that have no commercial value so other people can use the inventions for free. It can be seen in Fig. 3 that most of the utility model holders are likely to voluntarily renounce the utility models around the third year. The maintenance fee of utility models, as stipulated by the Intellectual Property Office, is the lowest between the first and the third year (about 83 USD per year), and
from fourth to the sixth year, the utility model maintenance fee will start to escalate (about 133 USD per year). This increase of utility model maintenance fee starting from the fourth year may be a major reason causing most patent holders to renounce the rights voluntarily. The study examined the granting and premature expiration of utility models of Sections AeH between 2003 and 2012. In 2003, Taiwan revised its utility model law and switched from substantive to formative patent examination. Although utility models granted before 2003 were not included in this study, it would be interesting to examine if the revision of the utility model law had an influence on the utility model maintaining duration. Although the utility models established by different countries protect technical content with lower invention levels, the evaluation of utility models is conducted differently by different countries. The findings of this study might also perhaps be used by countries interested in adopting the utility model system to assess the duration for utility model protection. Companies applying for the utility model might also use the information here to consider issues related to the term of utility model maintenance, in addition to their consideration of such issues for patents.
References [1] Lewis RJ. Protecting a sensory attribute of food by patent. Intellect Prop Technol Law J 2006;18(11):17e21. [2] Beneito P. The innovative performance of in-house and contracted R&D in terms of patents and utility models. Res Policy 2006;35:502e17. [3] Mott KM. The concept of the small patent. Int Bus Exec 2007;5(3):23e4. [4] Brieghel H. Europe’s utility model initiative. World Pat Inf 1996;18(2):112. [5] Bosworth D, Yang D. Intellectual property law, technology flow and licensing opportunities in the People’s Republic of China. Int Bus Rev 2000;9:453e77. [6] Dulken SV. The future of patent information. World Pat Inf 2000;22:273e5. [7] Miller TR. New procedures at the USPTO: the risks and rewards of accelerated patent examination within 12 months. Intellect Prop Technol Law J 2007;19(1):12e7. [8] Zarate IJ. Intellectual property information in Latin America and the Caribbean. World Pat Inf 2000;22:39e42. [9] Yanli Q. Chinese patent law and patent information service. Int Inf Libr Rev 1994;26(1):11e8.
Please cite this article in press as: Chen R, et al., Patent maintaining and premature expiration of utility models in Taiwan, World Patent Information (2014), http://dx.doi.org/10.1016/j.wpi.2014.03.003
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[10] Brandt CP. Experiences with utility model Protection in Germany. World Pat Inf 1996;18(3):177. [11] Waris M. Patent information centres e value added services through the network. World Pat Inf 1999;21:245e8. [12] Jung S, Imm KY. The patent activities of Korea and Taiwan: a comparative case study of patent statistics. World Pat Inf 2002;24:303e11. [13] Newton J. Towards a European utility model. Eur Intellect Prop Rev 1996;18(8):446e9. [14] Chen R, Hwang CR. Changes and challenges in using the formality examination for utility models in Taiwan. J Intellect Prop Rights 2012;17:20e6. [15] Hwang CR. The term of a design patent. J Orient Inst Technol 2009;29:135e44. [16] Lo SS. Innovation and patenting activities at universities in Taiwan: after Bayh-Dole-like acts. World Pat Inf 2012;34:48e53.
Chia-Ling Feng received the BS degree in Department of Cosmeceutics, China Medical University (CMU) in Taiwan. Now she is a student of Graduate School Digital Content and Applied Design, Southern Taiwan University of Science and Technology (STUST). Her area of expertise is the Animation Design and Utility Model.
Rain Chen received the MS/ PhD degree in Industrial Design from National Cheng Kung University (NCKU) in Taiwan. He had been patent examiner in Intellectual Property Office of Taiwan (TIPO) for over two years. He is a Patent Attorney. Now, he is an associate professor and lab leader (Innovative Design and Patent Management Lab, IDPM) in Southern Taiwan University of Science and Technology (STUST).
Kuan-Wei Chen received the BS degree in Department of Computer Simulation and Design, Shih Chien University (SCU) in Taiwan. Now he is a student of Graduate School Digital Content and Applied Design, Southern Taiwan University of Science and Technology (STUST). His area of expertise is the Animation Design and Utility Model. His specializes in 3D modeling and video effects.
Please cite this article in press as: Chen R, et al., Patent maintaining and premature expiration of utility models in Taiwan, World Patent Information (2014), http://dx.doi.org/10.1016/j.wpi.2014.03.003
Contents lists available at ScienceDirect
World Patent Information journal homepage: www.elsevier.com/locate/worpatin
Patent maintaining and premature expiration of utility models in Taiwan Rain Chen*, Chia-Ling Feng, Kuan-Wei Chen Department of Creative Product Design, Southern Taiwan University of Science and Technology, No. 1, Nan-Tai Street, Yongkang Dist., Tainan City 710, Taiwan, ROC
a b s t r a c t Keywords: Utility models International patent classification Patent renewal rate Patent expiration rate Taiwan
The most commonly seen patents are invention patents, utility models and design patents. Among them, utility models are the most controversial type. The purpose of utility models is to quickly protect creations of lower technological levels or with a shorter life cycle. Nonetheless, the most optimal length of the term of utility models remains an open question. Utility models in Taiwan are the focus of this study, and International Patent Classification (IPC) was used here for the random sampling of the utility models. The investigators discussed the granting of the utility model and the expiring of utility models prematurely in Taiwan over the past ten years (2003e2012). The results suggest that compared to other sections, Section A (human necessities) and Section E (fixed constructions) of IPC have a shorter term of utility model maintaining. Aside from a higher expiration rate, their utility model terms are on average just over 3 years. As for the Section H (electricity) and Section C (chemistry, metallurgy), their utility model terms are slightly longer than those of other utility model sections and the number of renewed cases are also greater. In addition to a lower expiration rate, the utility model terms of these two sections are sometimes longer than five years. The study results can perhaps also be used as a reference by countries interested in introducing the utility model for determining the term of utility models. Ó 2014 Elsevier Ltd. All rights reserved.
1. Introduction Among nations with a patent system, most of them protect invention patents, but not many of them include the utility model. Taking the USA as an example, patents under US patent law are classified into three types: utility patents, design patents and plant patents [1]. According to Beneito [2], utility patents can be further divided into patents and utility models. The three most commonly used patent types by countries worldwide are invention patents, utility models, and design patents. The utility model is the most controversial one. The purpose of invention patents is to protect technological inventions, while the purpose of design patents is to protect the style and appearance of a creation. After a long evolvement, these two types of patents are relatively stable in terms of the examining system. The position of the utility model, however, is ambiguous. Countries with the utility model system use it to quickly protect simple technological inventions by granting the right rapidly. Taiwan as an example, patent
* Corresponding author. Tel.: þ886 6 253 3131x8107; fax: þ886 6 301 0020. E-mail addresses: [email protected], [email protected] (R. Chen).
types include Invention Patent, Utility Model, and Design Patent. Table 1 shows the three types of patents in Taiwan and their features. Germany introduced its utility model law [3] in 1891, becoming the first country adopting the utility model among industrial countries in Europe. The objective of the utility model is to quickly protect creations with a lower technological level and a shorter life cycle [4e6]. In other words, the utility model has a shorter examination process [7]. Although Trade-Related Aspects of Intellectual Property Rights (TRIPs) does not cover the utility model, the majority of countries worldwide have still established a utility model system based on the features of their industries. For example, Brazil, China, Germany, Korea, Netherlands, and Taiwan all use the utility model to protect the domestic industries [8e13]. According to the patent law in Taiwan, a utility model is the creation of technical ideas relating to the shape or structure of an article or combination of articles, utilizing the laws of nature. The term of a utility model shall expire after a period of ten (10) years starting from the filing date [14]. Only articles with a shape and structure or assemblies of these articles are eligible for utility model applications. Manufacturing methods, application methods,
http://dx.doi.org/10.1016/j.wpi.2014.03.003 0172-2190/Ó 2014 Elsevier Ltd. All rights reserved.
Please cite this article in press as: Chen R, et al., Patent maintaining and premature expiration of utility models in Taiwan, World Patent Information (2014), http://dx.doi.org/10.1016/j.wpi.2014.03.003
2
R. Chen et al. / World Patent Information xxx (2014) 1e5
Table 1 Types and features of patents in Taiwan. Patent type
Invention patent
Utility model
Design patent
Patent examination
Substantive examination system Higher technological creations Industrially applicable, novelty, and non-obviousness 18e36 months
Formality examination system Lower technological creations Industrially applicable, novelty, and non-obviousness 4e6 months
Substantive examination system Appearance and style related creations Industrially applicable, novelty, and creativity 12e18 months
20 years
10 years
12 years
Targets of protection Patentability requirements
Time for the examination Patent protection term
treatment methods of articles and chemicals or chemical compounds without a specific volume or shape are not qualified for the utility model, and thus they are not eligible for utility model applications. The patent protection term varies among countries depending on the type of patents and the industrial development. Nevertheless, many patent holders do not wait until the end of the term but voluntarily renounce the patent at any time to stop paying for the patent maintenance fee. After implementing patent law, the government can revise the law according to the condition of the industries. For example, Japan revised its patent law in 2006 to extend the patent term. The term of patent protection can be prolonged according to the life cycle of the product after commercializing the patent as well as the public’s need for patent right extension [15]. During the revision of the patent law in 2013, Taiwan also proposed regulations and procedure for extending the term of patents, especially for pharmaceutical products and other articles requiring a longer research and development period. On February 6, 2003, Taiwan revised its patent law to change the examination benchmark of the utility model from a substantive examination system to a formality examination system. This change impacted the innovation and patenting activities at universities in Taiwan [16]. A formality examination system means that the examination of a utility model application will be based on whether the specification, scope of the utility model for application, abstract, and figures meet the formal requirements. During the formality examination, there is neither prior art search nor substantive examination on whether the creation qualifies for the utility model requirements. An advantage of the formality examination is the shorter examination time, which allows applicants to obtain the utility model right faster. Although the term of protection for utility models is limited to ten years, products with a shorter life cycle, such as cell phones, tablet computers and other consumer electronics, can be quickly and conveniently protected. Nonetheless, the length of the utility model protection remains unsettled. In Taiwan, the majority of patent applications are for the utility models. In this study, the investigators chose utility models of Taiwan as the study samples. In Taiwan, the term of the utility models is ten years. In this study, patent sampling was based on International Patent Classification (IPC). The investigators explored the situations of the granting of utility models and premature expiration over the past ten years (2003e2012). The investigators also analyzed the term of utility models to discuss the ideal length of patent protection term of each patent class. The objectives of the
study are as follows. First, the main trend of the renewal and premature expiration of utility models in Taiwan over the past ten years is investigated and discussed. Second, renewal and expiration statistics were determined for each of the eight major sections of utility models by classifying the research samples based on the IPC. Third, among the eight sections, those with the shortest and the longest duration are to be analyzed, and possible explanations for the phenomenon will be offered. 2. Research samples To make the study more general, the investigators did the random sampling using International Patent Classification (IPC), which was established according to Strasbourg Agreement Concerning the International Patent Classification and enacted by World Intellectual Property Organization (WIPO). The earlier editions of IPC were application oriented, but in view of the global trends, the classification of the contents of patent technology in the latter IPC editions has been both functionality and application based. IPC has a hierarchical classification system, and mutually independent symbols are used to represent the patent technology of each domain. There are a total of six levelsdsections, subsections, classes, subclasses, groups, and subgroups. In this study, the random sampling was done at the section level only. A total of ten years (from 2003 to 2012) were included in the sampling in order to match with the ten-year utility model protection term. From 2003 to 2012, the investigators picked the first issued utility model on the first day of each month and included it in the study samples. From each section (Sections AeH), 120 utility models were randomly sampled, and in total, there were 960 cases. The study used each section to compute the ratio between utility model renewal and utility model expiration. The data can be used to explore if the premature expiration of utility models differs among the sections. 3. Validity and expiration rate of utility models in Taiwan The study analyzed the data based on the system sampling described above, and the results are presented in Table 2. Among a total of 960 randomly sampled cases, 507 of them were renewed cases (52.81%), while 453 of them were expired cases (47.19%). More specifically, Section A (N ¼ 69) and section E (N ¼ 67) had the highest number of expired cases, while Section C (N ¼ 43) had the lowest number of expired cases. To further examine the rate of total renewal, the total number of renewed cases of all sections, i.e., 507, was used as the denominator, while the number of renewed cases of each section was the numerator. Take Section A as an example, the number of renewed
Table 2 The renewal and the expiration rates of Sections AeH. Section
The number of cases of renewed (a)
The number of cases of expired (b)
The renewal rate (a/a þ b)
The expiration rate (b/a þ b)
A B C D E F G H Sum
51 65 66 71 53 62 62 77 507
69 55 54 49 67 58 58 43 453
0.42 0.54 0.55 0.59 0.44 0.52 0.52 0.64 0.53
0.58 0.46 0.45 0.41 0.56 0.48 0.48 0.36 0.47
Please cite this article in press as: Chen R, et al., Patent maintaining and premature expiration of utility models in Taiwan, World Patent Information (2014), http://dx.doi.org/10.1016/j.wpi.2014.03.003
R. Chen et al. / World Patent Information xxx (2014) 1e5
3
Fig. 1. The total renewal rate of Sections AeH.
cases of Section A was 51, while the total renewed cases were 507, and therefore, the total renewal rate of Section A should be 51/ 507 ¼ 10.06%. Each section’s renewal rate was calculated as such (See Fig. 1). To further understand the expiration rate of each section, the study used the total number of expired cases, 453, as the denominator, and the number of expired cases of each section as the numerator. Take Section A as an example, the number of expired cases of Section A was 69, and because the total number of expired cases was 453, the total expiration rate of section A should be 69/ 453 ¼ 15.23%. For other sections, see Fig. 2. Another worth discussing type of data is the average expiration time of each section (unit ¼ years). For the utility model, the term is 10 years. The study calculated the number of valid years of expired utility models to find out the average valid duration of utility models from Section A to Section H (see Fig. 3). It can be found from Fig. 1 that Section A (10.06%) and Section E (10.45%) are the two with the lowest total renewal rate, and their average valid durations are the shortest too (3.07 years and 3.04 years respectively). This finding suggests that after acquiring the utility model right, industries of the two sections do not need a long utility model term. Section H (15.19%) and Section C (14.00%) are the two sections with the highest renewal rate, and the average rate of validity for Section H is 3.24 years and 3.39 years for Section C This finding indicates that, for these two
sections, industries require to maintain the utility models for a longer term. 4. Discussion and conclusion According to IPC classification, the granting of utility models and premature expiration of Taiwanese utility models of Sections AeH between 2003 and 2012 are discussed in this paper. Sections A and E have the shortest utility model maintaining term in contrast to other sections’, whereas Sections H and C not only have a higher term of utility model maintaining but also a greater number of renewed cases. Compared to other sections, Sections A and E have relatively a shorter term of utility model maintaining. The study showed that within ten years, Section A has many cases with a utility model term less than 3 years; only few of them are more than 5 years. Randomly sampled cases with a term less than 3 years were compared and the results showed that the majority of the utility models with a shorter renewed term are small articles, such as M298398, the little finger cup, and the structural improvement of three-level envelop-type digitally controlled electric blanket. As for Section E, its term for utility model maintaining is quite bipolar. In 2003, there were many Section E utility models with a utility model term less than a year. The investigators examined several randomly sampled Section E utility models with a less than one year of utility model term and found that these utility models were all structure
Fig. 2. The total expiration rate of Sections AeH.
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Fig. 3. The average valid duration of utility models of Sections AeH.
related utility model, e.g., fault indicator lights (M277073), the structure of warning lights and road sign warning lights, and the voice-controlled electric window blind (M531026). It can be seen from the above-mentioned utility models with a shorter term of utility model maintaining that these products are likely to be gradually replaced by others due to a low irreplaceability. As a result, these utility models tend to last shorter. There are several cases where the utility model holders even voluntarily renounced their utility models at the year of the publication of the utility model. Compared to other sections, Sections H and C have a longer term of utility model maintaining and more renewed cases. Aside from a low expiration rate, the majority of the cases have a longer term of utility model maintaining (more than five years), and fewer of them have a term less than four years. Some examples here are the progressive type coagulation and sedimentation tank (M652382) and the top and bottom feeder of PCB electroplating equipment (M240452) of Section C, and the mobile communication device with call-back restriction (M242952) and the stair-type multilayer wireframe (M240057) of Section H. Because they are more likely to be the basic part of production chains, utility model holders are less likely to give up these utility models in Sections C and H. The investigators found that the duration of utility model maintaining and the classification of utility models (i.e., Sections AeH) are closely related. The maintenance fee charged for granted utility models may be involved as well. To promote an effective use of patents, many nations have stipulated a patent maintenance fee for maintaining a patent, and the patent fee increases substantially as the years of the patent increase. The principle here is to encourage patent holders to voluntarily renounce their patents that have no commercial value so other people can use the inventions for free. It can be seen in Fig. 3 that most of the utility model holders are likely to voluntarily renounce the utility models around the third year. The maintenance fee of utility models, as stipulated by the Intellectual Property Office, is the lowest between the first and the third year (about 83 USD per year), and
from fourth to the sixth year, the utility model maintenance fee will start to escalate (about 133 USD per year). This increase of utility model maintenance fee starting from the fourth year may be a major reason causing most patent holders to renounce the rights voluntarily. The study examined the granting and premature expiration of utility models of Sections AeH between 2003 and 2012. In 2003, Taiwan revised its utility model law and switched from substantive to formative patent examination. Although utility models granted before 2003 were not included in this study, it would be interesting to examine if the revision of the utility model law had an influence on the utility model maintaining duration. Although the utility models established by different countries protect technical content with lower invention levels, the evaluation of utility models is conducted differently by different countries. The findings of this study might also perhaps be used by countries interested in adopting the utility model system to assess the duration for utility model protection. Companies applying for the utility model might also use the information here to consider issues related to the term of utility model maintenance, in addition to their consideration of such issues for patents.
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Please cite this article in press as: Chen R, et al., Patent maintaining and premature expiration of utility models in Taiwan, World Patent Information (2014), http://dx.doi.org/10.1016/j.wpi.2014.03.003
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Chia-Ling Feng received the BS degree in Department of Cosmeceutics, China Medical University (CMU) in Taiwan. Now she is a student of Graduate School Digital Content and Applied Design, Southern Taiwan University of Science and Technology (STUST). Her area of expertise is the Animation Design and Utility Model.
Rain Chen received the MS/ PhD degree in Industrial Design from National Cheng Kung University (NCKU) in Taiwan. He had been patent examiner in Intellectual Property Office of Taiwan (TIPO) for over two years. He is a Patent Attorney. Now, he is an associate professor and lab leader (Innovative Design and Patent Management Lab, IDPM) in Southern Taiwan University of Science and Technology (STUST).
Kuan-Wei Chen received the BS degree in Department of Computer Simulation and Design, Shih Chien University (SCU) in Taiwan. Now he is a student of Graduate School Digital Content and Applied Design, Southern Taiwan University of Science and Technology (STUST). His area of expertise is the Animation Design and Utility Model. His specializes in 3D modeling and video effects.
Please cite this article in press as: Chen R, et al., Patent maintaining and premature expiration of utility models in Taiwan, World Patent Information (2014), http://dx.doi.org/10.1016/j.wpi.2014.03.003