When an owner of a utility model patent enforces her utility model patent right, warning should be conducted after a technical report of a utility model patent was handed. This is expressed as a rule in Article 104 of the Patent Act. The reason is that utility model patents only go through the examination of formality but not the examination of substantiality. So, to prevent utility model patent owners from abusing their rights to impact third parties’ utilization and development of technology, when the utility model patent owners enforce their rights, information for objective judgment should be provided. That is, a technical report of a utility model patent should be handed. According to the legislation, the purpose was to prevent utility model patent owners from abusing their rights. That is not to say that if no technical report of a utility model patent has ever been handed, damages cannot be claimed. So, although the plaintiff had not handed to the defendant any technical report of the utility model patent to conduct warning before filing a law suit, the plaintiff still can establish a cause of action based on infringement of the patent at issue against the defendant, as long as the plaintiff can prove that the defendant’s act of practicing the patent at issue was based on the defendant’s intent or negligence.

Utility model patent, technical report, formality examination, prior art, damages