Unlike some other countries which have separate laws on design and patent, the patent system in Taiwan includes invention, utility model and design under the same Act. There were comprehensive revisions including the design patent before the prevailing Taiwan Patent Act took effect as from January 1, 2013. The protection of a design patent was then extended to partial design, computer-generated icons, graphical user interfaces (GUI), and a set of articles for a single application; also, a derivative design application could be filed for similar designs. Currently, the protection term for a design patent is 12 years from its application date.
In order to meet the public request and world trend for examination practices and to provide better interpretation on the disclosure of design drawings, Taiwan Intellectual Property Office (TIPO) recently made amendments in the design examination guideline (effective as from April 1, 2016), and also the Enforcement Rules of Patent Act (effective as from July 1, 2016). The highlights of these amendments are as follows:
Design Examination Guideline
- Per the prevailing Patent Act, the scope of a design is determined by the drawings, and the description in the specification could be reviewed for reference when necessary. Accordingly, the applicant shall file color drawings if he wishes to claim the color shown in the design, otherwise the applicant shall file only ink drawings, grey-scale computer-generated drawings or black-and-white photographs if no color is to be claimed in the design. Before this amendment, the applicant could file color drawings if he did not intend to claim the color by stating the same in the description, but this would cause the interpretation of description to be broader than the disclosure of drawings.
- The title of design shall neither include any trademark / special numbering, nor the description of technical effect / appearance usage. For a partial design, it was required to include the wording such as “A part of (an article)” for its title of design in order to clearly specify the claimed design. After the amendment, it would not be required to add such wording as long as those respective parts in the drawings to be claimed and not to be claimed are clearly presented.
- In order to distinguish the claimed and unclaimed portions of a design, a solid and dotted/broken lines or other forms could be used; if necessary, the applicant shall disclose the drawings in a monotone shading manner for the portion not to be claimed, and add color to the portion which is to be claimed in the design. Also, the purpose of the unclaimed portion of a design has been revised for the use in evaluating and explaining its relationship with the position, size and layout of the claimed portion, and the environment in which the article embodying the design. In fact, the new guideline has provided many examples of published designs including those from US and Japan in order to fully illustrate the claimed and unclaimed portions of a design.
Enforcement Rules of Patent Act
- For design which computer icons and graphical user interfaces are used in the article, the wording “continuous and dynamic changes” are revised to be “appearance with changes” in Article 51, Paragraph 3. Since the appearance of such icons or interfaces will change not only in a continuous and dynamic manner by sequence, but also in various or multiple forms either or not by sequence, the revised wording of “appearance with changes” tends to be a superordinate concept of “continuous and dynamic changes” in a broader sense.
- Per Article 53, Paragraph 6, the scope of a patented design does not include the drawings which are marked as reference. The revision now expressly stipulates that reference drawings can serve to illustrate the article of design or the environment of use.
In addition, TIPO announced on June 27, 2016 that if the applicant claims a foreign priority case when filing a design application in Taiwan, the priority document of said design application must be a foreign application certified by a foreign patent authority such as EUIPO or WTO, but not necessary be a registration certificate thereof. However, for foreign patent authority such as Property Office of Singapore (IPOS) which provides only the certified document of a registration certificate but not the certified document of a foreign application, TIPO will accept such registration certificate as a certified priority document. Further, starting from July 1, 2016, the applicant could file an electronic file of a priority document as set forth by TIPO while attesting it is a true copy of the original, in lieu of the paper document of a certified priority document. Said electronic file of a certified priority document could be a DVD (or its reproduction) or its online file issued by the foreign patent authority, or a scanned file from a certified priority document issued by the foreign patent authority.
