Due to emerging digital technologies and innovations, graphic design for Icons and GUI has become increasingly important. Taiwan Intellectual Property Office recently relaxed the requirements for design application by amending the Examination Guidelines for design patents and implemented on November 1, 2020. Major highlights are as follows:
Definition for product of graphic design
It is expressly stipulated by Paragraph 2 under Article 121 of Patent Act that a design patent can be filed for Computer Generated Icons (Icons) and Graphical User Interface (GUI) applied to an article or product. Before the amendment of examination guidelines, a design patent must clearly specify the tangible product, such as a monitor, display or panel of which the Icons or GUI image is applied thereon. The amendment has relaxed the definition for said tangible product. Now, the applicable article for a design patent could be a computer program product, i.e. software or application program without physical form. Accordingly, the applicant can file a patent for image design by stating its applicable article, e.g. the ions of smartphone, or simply stating the article as computer program product, e.g. the operation menu of computer program product. Notably, a design patent cannot be filed to protect only the image per se. The application must state that the graphics or images are applied on a computer program product or an article (with physical form), in order to meet the definition of a design patent. Further, for the unclaimed part of a design patent, it is not necessary to use dotted lines depicting the vehicle, such as a display or monitor.
Disclosure of specification and drawings
It is required to submit a specification with drawings when filing a design application. The drawings shall be perspective view, six basic views (of top, bottom, right-side, left-side and rear views), plan view, unit view, or auxiliary view. The drawings of a design patent shall disclose all contents in a sufficient manner. Basically, non-disclosed content in the drawings will be deemed as the part not to be claimed for patent protection; no matter what reasons for the omission of said non-disclosed content, whether it is not noticeable when the consumer makes the purchase or use of the design product, nor the applicant feels that said content does not possesses design characteristics or features. It is not required to state the non-claimed part in the description of the specification. For the omitted views which are identical, symmetric, or due to other cause, but the omission is not belonged to the unclaimed part, then the specification shall state the same not to be a disclaimed part. If the drawings have views that are not sufficiently disclosed the design content, or they do not clearly define the scope as claimed by the design application, then TIPO may determine that the design application does not meet the patent requirements for a patent capable be carried out.
Buildings and interior designs are patentable for design
A design patent generally refers to the aesthetic appearance of creation for an article. Per the old examination guidelines, an immovable property (real property) is not eligible for a design patent in Taiwan. The relevant wordings of such restriction were deleted from the examination guidelines at the time when the revised Patent Act of 2013 was effected, but still some applicants questioned the patentability of a design for immovable property. Accordingly, TIPO revised the examination guidelines to explicitly indicate that the article of design shall also apply to buildings, bridges, or interior spaces.
Filing divisional design application
Before the amendment of examination guidelines, if a design application only discloses one outer appearance applied on one article, without showing two or more designs, then a divisional application could not be filed for the unclaimed part of the design. The amendment has now removed such restriction for filing a divisional design application. Namely, if a design application has substantially disclosed two or more designs, the applicant may file a divisional application as long as it is within the original scope of its parent application. In addition, a divisional application must be filed for a pending design application at primary or re-examination stage before a Notice of Allowance is issued.
