The Taiwan Intellectual Property Office (TIPO) has recently announced a new measure regarding priority claim for design patent application. When an applicant files a Taiwan design patent application claiming the priority of its basic foreign application, the approval of priority claim will be initiated only if the Examiner has found prior art or relevant material that has a filing date or laid-open date during the period between the priority date and filing date of the Taiwan design application. Otherwise, regardless of whether it is a single or multiple priority claim, the priority claim will be published in the official Patent Gazette. This new measure is applicable starting from August 1, 2019.
Furthermore, TIPO has also proposed the amendment of examination guidelines to expressly stipulate that a design patent application can cover only the patent right of a single design by incorporating the above new measure. If a Taiwan design application discloses a single design which is composed of two or more designs in foreign applications, or if a Taiwan design application discloses only the partial design content in a foreign application, the Examiner will determine that they do not belong to a “identical designs” and therefore may not approve its priority claim. In this regard, TIPO provides examples as follows:
Example 1
The applicant files a Taiwan design patent application entitled “Watch” by including “watch case” and “watch strap” in the design application.
1A. Two priorities of “watch case” and “watch strap” are claimed, respectively.
1B. One priority of “watch case” is claimed, and no priority of “watch strap” is claimed.
Example 2
The applicant files a Taiwan design patent application entitled “Audio set” by including “audio player” and “speaker” in the design application.
1A. Two priorities of “audio player” and “speaker” are claimed, respectively.
1B. One priority of “audio player” is claimed, and no priority of “speaker” is claimed.
In the above examples, if the subject application in Taiwan is a combination of multiple designs or a partial design as disclosed by priority case(s), they will not be deemed as a “identical designs” and so the priority claim(s) may not be approved.
According to the filing process of a Taiwan design application, the examiner will automatically carry out substantive examination after the applicant has filed the required documents. Per Taiwan Patent Act, a design application should be filed for each design. Since a design covers only one embodiment, TIPO previously limited that only one priority could be claimed for one design patent application. However, in practice, the applicant might simultaneously claim several priorities for one design application. After requests by local patent agents, TIPO has decided by reference to the current practice in America and Japan, not to limit the number of priority claims for a design application, unless the examiner finds that the priority claim is against the requirements of “identical designs” as explained above. Additionally, for a patent design application with two or more designs, the applicant could also consider filing divisional applications for individual designs while claiming their separate priorities accordingly.
