Newsletter
DESIGN PATENT EXAMINATION GUIDELINES AMENDED
In response to the amendment of the Patent Act, on 4 March 2005, the Intellectual Property Of-fice (IPO) announced amendments to its Ex-amination Guidelines for examination of new design patent applications. The main points of the amendment are as follows:
A specification and drawings filed for a new design patent application must include the title of new design, a description of the creation, description(s) of the drawings, and drawings. The content of the above-mentioned disclo-sure should clearly and fully disclose the new design for which patent protection is sought, based on which persons with ordinary knowledge of the technical field to which the new design belongs may understand its con-tent and put it into practice.
According to Article 109 Paragraph 1 of the Patent Act, a patentable new design refers to the shape, pattern, color, or a combination thereof, applied to the external appearance of an object. In addition, a new design must possess "object physicality " and "visuality." Object physicality means that the claimed de-sign must be one applied to the external ap-pearance of a specific and physical object, which possesses industrial applicability. Visuality means that the claimed design must be reflected through appeals to the visual sense. Designs related to shapes and patterns of objects are spatial in nature, which com-prise spatial design elements, i.e. points, lines, and surfaces. Design related to colors refer to visual sensation produced in the eyes by the projection of colored light.
According to Article 120 of the Patent Act, when determining whether to grant a new de-sign patent or not, consideration should be made with respect to those set out in Articles 109 to 112, Articles 117 and 118, Article 119 Paragraph 1, and Article 122 Paragraph 3 of the Patent Act. Among these provisions, patentability of a new design are as follows: the definition of a new design as prescribed in Article 109 Paragraph 1, industrial applicabil-ity, novelty, and creativeness of a new design as prescribed in Article 110, the constructive novelty requirement as prescribed in Article 111, and the statutory unpatentable subject matters as prescribed in Article 112.
The Patent Act provides for both international and domestic priority claims. But, only in-ternational priority is available for new design patent applications under Article 129 of the Patent Act, which applies Article 27 mutatis mutandis, and defines the priority period for new designs. An applicant filing a new design patent application in Taiwan may claim prior-ity for his Taiwanese design patent application based on the first design patent application filed in a reciprocal foreign country, provided that the Taiwanese patent application is filed within the six-month grace period.
Under Article 122 Paragraph 1 of the Patent Act, when examining an application for a new design patent, the IPO may instruct the appli-cant to make an amendment to the specifica-tion and/or drawings filed for the patent ap-plication within a specified time period; or an applicant may file an application with the IPO to make an amendment. Under Article 127 Paragraph 1 of the Act, a patentee may file an application with the IPO to correct the speci-fication and/or drawings of a new design patent that has already been granted and pub-lished. In addition, under Article 129 Para-graph 1, which applies Article 71 mutatis mutandis, during an invalidation action or an ex officio examination, a patentee may file an application to correct the specification and/or drawings, or may be instructed by the IPO to do so within a specified time period.
If a design patent application covers two or more designs, divisional applications may be filed for them. For a patent application filed under an inappropriate patent type, the patent application may be converted into one for an-other patent type. Thus, an invention or new utility model application may be converted into a new design application. For a design originated from and similar to another design created by the same person, an associated new design patent may be applied. An application for an independent new design patent may be converted into an application for an associated new design patent, or vice versa. If a design is based on and similar to another design created by the same person, an associated new design patent may be applied for.