To stay current with the latest technologies and to promote the development in digital innovation, TIPO (Taiwan Intellectual Property Office) reviewed design patent legal regimes and published the partial amendment to Chapter III: Substantive Examination of Design Patents of The Examination Guidelines for Patents, which is due to take effect on November 1, 2020.
The amendment mainly relaxes the disclosure requirements for a design patent specification and drawings, clearly stipulates that an architectural design and an interior design are eligible subject matter for a design patent, relaxes the requirements for filing a design divisional application, and amends the stipulation related to a graphic image design, among other changes. Details regarding the amendments are as follows.
1. Relaxing the disclosure requirements for design patent specification and drawings
According to the Guidelines before amendment, drawings shall sufficiently disclose each view of a claimed design, such that the appearance of the entire claimed design can be fully disclosed; the omission of views from the drawings is allowed only if the views are identical or symmetric or where the omitted sides are not noticed by an ordinary consumer when purchasing the product.
According to the amended Guidelines, if a view is not disclosed in the drawings, such view of the design will be deemed a "disclaimed portion" and the claimed design would accordingly belong to a partial design. In light of the "partial design" concept, the amendment to the Guidelines has relaxed the above-mentioned requirements.
Applicants should note that many countries still require complete disclosure of the six-sided view. If you want to use the Taiwanese application as the basis for the priority claim and file design patents in other countries, the completeness of the six-sided view and the three-dimensional view are still necessary.
2. Clearly stipulating that an architectural design and an interior design are eligible subject matters for a design patent
The Guidelines of 2005 stipulate that the article to which a design is applied has to be a tangible article with a three-dimensional shape and a movable property with a constant shape that can be transacted independently by a customer. In addition, the 2005 Guidelines specify that architecture such as a house or a bridge, or a realty design such as an interior design or a garden design should be deemed unpatentable.
The above stipulations were cancelled in the Guidelines of 2013. The amended Guidelines further clearly stipulate that "architecture, a bridge or an interior, etc." may also be an article to which a design is applied.
3. Relaxing the requirements for filing a design divisional application
According to Guidelines before amendment, if the drawings initially filed only disclose one design applying to one article and do not contain any other reference views or state-of-use views, a divisional application cannot be filed since the drawings do not clearly disclose substantially two or more designs. It is not possible to file divisional application for the "part design which is not claimed".
According to the amended Guidelines, the requirement for the divisional application will be confirmed with that for effecting amendment and that for effecting a conversion, i.e., "an amendment/a conversion should not go beyond the scope of the specification and drawings initially filed". An applicant may file a divisional application(s) during pendency of the patent application by changing a part of the solid lines in the drawings initially filed to broken lines, or vice versa. However, the divisional application still has to comply with the requirement of "not going beyond the scope of the specification or drawings as initially filed."
4. Amending the stipulation related to a graphic image design
The Patent Act stipulates that computer generated icons and a graphic user interface filed to obtain a design patent should be applied to an article. According to Guidelines before amendment, the article may be a screen, monitor, display panel or other display-related articles. However, these articles still cannot cover a graphic image design presented by cutting-edge technology such as a projection, virtual reality, etc. In addition, when an applicant exploits patent rights for a graphic image design, an accused product is usually an intangible software or program.
For these reasons, the amendment was made with reference to "Chapter 12 – Computer Software Related Invention" of the Guidelines, including relaxing the restriction that the graphic image design has to be applied to a tangible article, which allows an applicant to designate a computer program product as the article to which a graphic image design is applied, such that the design can cover a tangible article as well as an intangible software or program.
These latest changes will enable software businesses to obtain design patent protection more easily and more comprehensively.
5. Other amendments
(1) Adding stipulations for the disclosure of colors
When an applicant uses black-and-white photos (or computer-generated drawings in grayscale) to present the shape or patterns of a claimed design, to prevent the claimed design from being interpreted as containing black, white or gray as colors, the amended Guidelines explicitly stipulate that the applicant shall specify in the Description of Design section: "The subject design is represented by black-and-white photos (computer-generated drawings in grayscale). The tone shown in the drawings only helps to show the contour of the subject design, but the subject design does not claim the colors of black, white, or gray as shown in the drawings."
(2) Adding a description of shape of an article created solely for a functional purpose
The amended Guidelines explicitly stipulate that "an unpatentable shape of an article created solely for a functional purpose" means that if the shape of an article is merely dependent on the basic shape of a "must-fit" portion of a conventional article, and the design as a whole is related to a consequential outcome for connecting or matching the conventional article but is not associated with any creative concept (e.g., the design of a bolt solely resulting from the shape of the threads of a conventional nut), such design is unpatentable.
(3) Amending principles for evaluating novelty and creativeness of a design containing a color(s)
Under the amended Guidelines if the difference between the claimed design and the prior art is a single color from a conventional color system, the application or change of such color in the design should be deemed as a minute difference not affecting the overall visual impression should be determined not to possess novelty. However, if the claimed design contains two or more colors, when determining if such combination of colors would be easily conceived, it should be taken into consideration whether these colors provide the design as a whole with a unique visual effect. If the combination of the colors does not provide the design with a unique visual effect, such combination should be deemed easily conceived by a person having ordinary skill in the art.
Accordingly, the amended Guidelines would provide an applicant with a more flexible filing strategy. In addition, the applicant would have a more complete protection to the appearance of their design(s).
2021-04-28
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