Newsletter
Ongoing Amendment to the ROC (Taiwan) Patent Act - Design Patent Practice
Ongoing Amendment to the ROC (Taiwan) Patent Act - Design Patent Practice
C. V. Chen/Daisy Wang
I. Background Information
The Taiwan Intellectual Property Office (TIPO) announced a draft amendment to certain provisions of the Patent Act on October 18, 2024. The main focus of this amendment mainly includes two parts: (1) amending the design patent practice, and (2) amending the mechanism for a true owner of the right to apply for patent to reclaim its rights through civil means and improving the related supporting mechanisms. The amendment to the Patent Act involves significant changes to the design patent practice, with the key points of amendment as follows:
1. To respond to the rapid development of emerging digital industries, where the design of graphics in digital technology is becoming increasingly diverse, the amendment expands the scope of design patent protection to include graphic designs used in digital technology. The amendment relaxes the restriction that graphic designs must be applied to "articles," clarifies the acts of practicing the new graphic design patent, and amends the corresponding provisions of applying for such new graphic design patent protection as well as the scope of patent protection (Amended Articles 121, 124, 136).
2. To introduce into the patent system the "Multiple Similar Design Joint Application" system. Referencing the international trends under the Hague Agreement as well as the practice in EU and USA, the "Multiple Similar Design Joint Application" system is introduced into the Taiwan patent system, with corresponding amendments to provisions as to patent correction, patent invalidation etc. (Amended Articles 127, 129, 139, 140, 141-1).
3. The novelty and creativeness grace period for design patent applications is extended from the original 6 months to 12 months (Amended Articles 122, 142).
4. To relax the timing for filing divisional application(s) for a design patent application. The timing for filing divisional applications under the current practice is “before a reexamination decision of the original application is issued” and the amendment extends it to “within 3 months as of the date of receiving an approval reexamination decision of the original application.” Corresponding amendments are made as to the grounds for non-patentability and invalidation. (Amended Articles 130, 134, 141).
5. To add transitional provisions and the transitional application of the new and old laws is specified, including the extension of the novelty and creativeness grace period for design patents to 12 months, the introduction of the "Multiple Similar Design Joint Application" practice, the extension of the deadline for filing divisional applications after reexamination approval, the principles for handling such applications etc. (Amended Article 157-5).
II. Major Content of the Amendment
A. Expansion of the scope of design patent protection to include graphic designs used in digital technology. The current restriction that graphic designs must be applied to "articles" is relaxed, the acts of practicing the new graphic design patent are clarified, and the application and scope of design patent are amended accordingly
1. Current Practice
According to Article 121 of the current Patent Act, a design refers to a creation of the shape, pattern, color, or a combination thereof of the whole or a part of an article, appealing to the visual sense. Computer graphics and graphical user interfaces applied to articles can be applied for design patent protection according to the current Patent Act. Under the current design patent examination guidelines, computer graphics and graphical user interfaces refer to two-dimensional or three-dimensional virtual graphics generated by computer program products and displayed or projected by various electronic device displays. The term "computer program product" refers to an item containing a computer-readable program or software, regardless of its external form. Since computer graphics and graphical user interfaces are, by nature, "appearance" creations with visual effects in terms of shape, pattern, color, or a combination thereof, and computer program products are broadly utilizable "articles" in industry, computer graphics and graphical user interfaces generated by computer program products can meet the requirement that a design must be applied to an article without a need to file separate applications for various electronic information products to which the graphic design is applied. A design application merely covering a graphic design that does not specify its application to computer program products or any other article should be rejected for not meeting the definition of a design.
According to the current design patent examination guidelines, the types of graphic designs include the following:
(1) Computer Graphics/Icon
Computer graphics/icon refer to a single graphic unit that expresses a display message or an operable object, a folder, or an application with a graphic. The types can be divided into static computer graphics and computer graphics with changing appearances.
(2) Graphical User Interface (GUI)
A graphical user interface (GUI) refers to an overall graphical operation interface composed of two or more computer graphics, dialog windows, or other menu units, helping users quickly obtain information or easily operate. The types can be divided into static graphical user interfaces and graphical user interfaces with changing appearances.
Since graphic designs with changing appearances are multiple variations in appearance generated from a single graphic design, they should be regarded as one design, which meets the unity requirement (one design per application). Each variation state does not represent an independent design and cannot be individually claimed for design patent right, and all the said variation states can be considered as a whole design composed of all variation states. A design patent application covering the said graphic design with changing appearances must also meet the requirement that the said design must be applied to an article and it is not allowed to apply for design patent protection solely for the disclosed graphics themselves.
The "design title" used when filing a graphic design application should record the article to which the graphic design is applied (i.e., “the article to which the graphic is applied" or "the article to which the graphical user interface is applied") and the design title must not be recorded solely as "graphic" itself. For example, the design title can be recorded as "a graphic applied to computer program products," "a graphical user interface applied to computer program products," "an operation menu applied to computer program products," or "a window screen applied to computer program products," so as to obtain broader protection without needing separate design applications for each electronic information product. If a patent applicant desires to file a design application covering a graphic design applied to computer graphics or a graphical user interface applied to a specific article, the "design title" can specify the particular article, such as "a graphic for a mobile phone," "a graphic for an ATM," or "a graphical user interface for a washing machine." If the content claimed in the design patent application includes both the graphic design and the article to which it is applied (the whole or part of the article), the "design title" should mention both the graphic design and the applied article. For example, if the claimed design includes both the overall shape of a mobile phone and the graphic on its screen, the design title should be recorded as "mobile phone with the graphic."
The "usage of the article " of a graphic design is used to assist in explaining the use or function of the article to which the graphic design is applied; if the article to which the graphic design is applied refers to a computer program product with a universal nature that can be installed on various electronic information devices, in principle, the usage of the article does not need to be specifically explained and can be omitted. However, if the graphic design is applied to a specific field of articles which must be explained, the "usage of the article" can be recorded; for example, "The usage of article can be expressed in as an ATM for withdrawal, inquiry, and transfer functions." The usage of article can also be used to record the usage method or function description of the graphic applied to the article, so that those with ordinary knowledge in the field of the design can understand the design content, for example: "The article use is recorded as an ATM. The graphical user interface disclosed in the drawings includes graphic elements for withdrawal, inquiry, and transfer. When the user selects the withdrawal graphic element, he/she will enter the withdrawal amount menu to select or input the desired withdrawal amount."
2. Content of the Proposed Amendment
Due to the rapid development of technology, various graphics produced by computer programs or other digital technologies are diversifying, and graphic designs are no longer limited to those being applied to "articles" with physical forms, especially with widespread applications in the metaverse, virtual reality, and augmented reality. Considering the international trend in design patent protection, design patent protection is also not limited to “designs applied to articles." The TIPO announced the following in the draft amendment to certain provisions of the Patent Act on October 18, 2024:
2.1 Design Patent Subject Matters
The restriction in Article 121 of the current Patent Act that “graphic designs must be applied to articles" is relaxed, and Article 121 is proposed to be amended as follows:
Article 121
A design refers to the creation of the shape, pattern, color, or combination thereof of the whole or part of an article, appealing to the visual sense.
A graphic generated by computer programs or other digital technologies can also be applied for design patent protection under this Act.
2.2 Subject Matters Not Allowed for Design Patent Protection
In line with the aforementioned amendment to Article 121 (deleting the requirement that graphic designs must be applied to articles), Article 124, Items 1 and 4 are specifically amended as follows:
Article 124
The following items are not eligible for design patents:
1. Purely functional designs (Note: originally "purely functional article shapes")
2. Pure artistic creations.
3. Integrated Circuit Layouts and electronic circuit layouts
4. Designs that are detrimental to public order or good morals (Note: originally "articles detrimental to public order or good morals")
B. Amendment to the Grace Period for Design Patent Applications
1. Current Practice
The current Patent Act, Article 122, provides as follows:
Article 122
A design that can be utilized in industry, without any of the following circumstances, may apply for and obtain a design patent under this Act:
1. The same or similar design has been disclosed in publications before the application.
2. The same or similar design has been publicly used before the application.
3. The design was known to the public before the application.
Even if a design does not fall under any of the circumstances listed in the preceding paragraph, it cannot obtain a design patent if it is easily conceived by a person with ordinary knowledge in the field to which it belongs based on prior art before the application.
If an applicant files a design patent application within 6 months after the occurrence of the public disclosure, whether intentional or unintentional, such fact does not constitute any of the circumstances listed in the first paragraph or the preceding paragraph that would prevent obtaining a design patent.
Disclosure in official gazettes in our country or abroad due to patent application made with intent by the applicant, does not apply to the preceding paragraph.
2. Content of the Proposed Amendment
According to the draft amendment, referencing to relevant foreign legislations and harmonizing Taiwan’s regulations with international grace period practice, Article 122, Paragraph 3 is amended to extend the grace period for design patent applications from the original 6 months to 12 months.
C. Introduction of the "Multiple Similar Design Joint Application" Practice
1. Current Practice
According to Article 129 of the current Patent Act, an application for a design patent should be filed for each design ("one design one application" principle); two or more articles belonging to the same category and customarily sold or used as a set may be filed as one design. Article 127 of the current Patent Act further specifies: the same person may apply for a design patent and its derivative design patent for two or more similar designs; the filing date of the derivative design shall not be earlier than the filing date of the original design; an application for a derivative design patent cannot be made after the original design patent is published; the same person cannot apply for a derivative design patent for a design that is not similar to the original design but only similar to the derivative design.
2. Content of the Proposed Amendment
The explanation of the draft amendment points out: “Considering that it is common in the design industry to develop multiple similar designs under the same design concept, allowing designers to cover multiple designs in one design patent application can meet industry’s needs. Additionally, international trends such as the Hague Agreement, the EU practice, and the United States practice also allow multiple designs to be filed in one design application, thus introducing the "Multiple Similar Design Joint Application" practice into Taiwan. The explanation of the draft amendment also points out: Considering that design patent applications and their derivative design patent applications have a master-subordinate relationship, the priority date claimed for a derivative design application should not be earlier than the filing date of the original design application so as to cope with the intent of Article 127, Paragraph 2 of the current Patent Act (the filing date of the derivative design shall not be earlier than the filing date of the original design). With the introduction of the "Multiple Similar Design Joint Application" practice into Taiwan, based on the same consideration, the original design specified in the design patent application filed under Article 127, Paragraph 1, Item 1 should be the first application, and the priority date claimed for each similar design should not be earlier than the filing date of the specified original design. After the introduction of the "Multiple Similar Design Joint Application" practice into Taiwan, it also involves supporting legislative amendments (please refer to the content of Item 4 below). Accordingly, Article 127, Paragraph 1 is specifically amended as follows (Paragraphs 2 to 4 are not amended):
Article 127, Paragraph 1
The same person with two or more similar designs may file a design patent application in one of the following ways:
1. By filing one design application and designating one of the designs as the original design
2. By filing a design patent and its derivative design patent; the derivative design is not subject to the preceding item
3. Supporting Legislative Amendments
To accommodate the introduction of the "Multiple Similar Design Joint Application" practice into Taiwan, the Patent Act is amended as follows:
(1) Article 139 is amended to add Item 1, specifying that the types of corrections for design patents include "deletion of design."
(2) In line with the aforementioned addition that design patentees may correct by "deletion of design," Article 140 is specifically amended as follows:
Article 140, Paragraph 1 (Addition)
The design patentee shall not abandon its patent right or apply for a correction specified in the preceding Article (Article 139), Paragraph 1, Item 1 (correction by deletion of design) without the consent of the licensee or pledgee.
Article 140, Paragraph 2 (Addition)
If there is a dispute over the ownership of design patent right, an abandonment of the design patent by the patentee before the mediation is established, the arbitration procedure is concluded, or the court judgment is finalized shall be invalid.
Article 140, Paragraph 3 (Addition)
When the design patent right is jointly owned, no application for correction under the preceding Article (Article 139), Paragraph 1, Item 1 shall be made without the consent of all co-owners.
(3) Considering that applicants applying for design patent under the "Multiple Similar Design Joint Application" practice or applying for derivative design patents should comply with the statutory requirements stated in Article 127 as amended, although violations of the aforementioned provisions are grounds for patent rejection, if they meet the patentability requirements upon examination and obtain design patent rights, referencing Article 48 of the Japanese Design Act, Article 141 as amended does not list "derivative design not similar to the original design" as a ground for design patent invalidation.
(4) In line with the introduction of the "Multiple Similar Design Joint Application" practice into Taiwan, Article 141-1 is newly added, specifying: “If a design patent includes multiple similar designs, anyone who believes that any of the said designs involves a ground for non-patentability may file an invalidation against each design, and the patent authority shall separately determine whether the invalidation is established for each design.
4. "One Design One Application" Rule & Designation of Design Type for a Graphic Design Patent Application
In response to the introduction of the "Multiple Similar Design Joint Application" practice into Taiwan and considering that group designs are also an exception to the "one design one application" rule, Article 129 of the draft amendment is amended as follows:
Article 129
An application for a design patent, unless otherwise provided by this Act, should be filed to cover one design (Note: wording amendment).
Where two or more articles belonging to the same category and customarily sold or used as a set, a design patent application can be filed for design applied to the articles in set (Note: not amended).
An application for an article design patent should specify the article to which the design is applied; a design application for a graphic design should specify that it is a graphic.
5. Relaxation of the Timing for Filing Division(s) of a Design Patent Application
A. Current Practice
According to Article 130 of the current Patent Act, if a design patent application substantively covers two or more designs, the patent authority may notify the applicant or the applicant may at its discretion apply for patent division. A division application should be filed before the issuance of a reexamination decision for the original design application. The divided application should continue the examination procedure completed by the original application.
B. Content of the Proposed Amendment
To provide applicants with more flexibility in design patent layout, Article 130 is specifically amended to allow a design patent applicant to have the opportunity to file divisional application(s) after the issuance of the initial examination decision or a reexamination approval decision. To accommodate the relaxation of the timing for filing divisional application(s) after patent allowance, Article 130 specifies the deadline and practical procedures for filing division as follows:
Article 130
If a design for which a patent is applied covers substantively two or more designs, the patent authority may notify the applicant or the applicant may at discretion apply for patent division.
A division application should be made within the following periods:
1. Before the reexamination decision of the original application is issued
2. Within 3 months after the delivery of the approval decision issued at the initial examination stage or within 3 months from the delivery of an allowance decision issued at the reexamination stage.
The filing date of the divisional application shall be the filing date of the original design application; if priority claim is involved, the priority claim can be made.
A divisional application shall not exceed the scope disclosed in the specification or drawings of the original design application at the time of filing.
The divisional application filed under Item 1 of the second paragraph shall continue the examination procedure completed by the original application.
For a divisional application filed under Item 2 of the second paragraph, the division shall be applied for from the content disclosed in the specification or drawings of the original application, which is not same as the approved design; the divisional application shall continue the examination procedure before the approval decision of the original application.
The specification or drawings of the original application approved shall not be changed, and the drawings at the time of approval shall be published.
6. Acts of Implementation of Design Patents
A. Current Practice
According to the current Patent Act, the provisions of Article 58, Paragraph 2 of the Patent Act as to the practice of an article invention patent mutatis mutandis to the practice of a design patent (as follows):
Article 58, Paragraph 2
The practice of an article invention patent refers to the acts of manufacturing, offering for sale, selling, using, or importing the article for the aforementioned purposes.
Accordingly, under the current Patent Act, the practice of a graphic design patent applied to an article includes the acts of manufacturing, selling, using, or importing the articles to which the graphic design is applied (limited to the articles specified at the time of filing the graphic design patent application).
B. Content of the Proposed Amendment
The TIPO proposed to amend Article 136 of the Patent Act as follows (amendments to the second and third paragraphs):
Article 136
A patentee of design patent, unless otherwise provided by this Act, has the right to exclude others from practicing the design or a similar design without the patentee’s consent.
The practice of an article design patent refers to the acts of manufacturing, offering for sale, selling, using, or importing the article for the aforementioned purposes.
The practice of a graphic design refers to the following acts:
1. Making, offering for sale, selling, using, or providing the graphic through Internet.
2. Manufacturing, offering for sale, selling, distributing, or importing the carrier containing the graphic for the aforementioned purposes.
The scope of the design patent right is based on the drawings and may consider the specification.
To accommodate the aforementioned proposed amendment to Article 136, the provision that “the provisions of Article 58, Paragraph 2 of the Patent Act as to the practice of an article invention patent mutatis mutandis to the practice of a design patent” is specifically deleted (as follows):
Article 58, Paragraph 2
The practice of an article invention patent refers to the acts of manufacturing, offering for sale, selling, using, or importing the article for the aforementioned purposes.
III. Progress of the Ongoing Patent Act Amendment
As mentioned above, the TIPO published a draft amendment to certain provisions of the Patent Act on October 18, 2024, with the main focus on two key points: (1) amending the design patent system, and (2) amending the mechanism for the true owner of the right to apply for a patent to reclaim their rights through civil means and improving related supporting mechanisms. The TIPO held a public hearing on November 4, 2024, to explain the content of the amendment and gather public opinion and comments.
Regarding the aforementioned two key points of amendment and the corresponding amended provisions, the participants in the public hearing generally agreed to the introduction of the "Multiple Similar Design Joint Application" practice and suggested that the TIPO refer to U.S. practice in formulating application fee regulations (i.e., the application fee is the same regardless of the number of designs included in one application).
Regarding the amendment to the graphic design system (relaxing the restriction in Article 121 of the current Patent Act that graphic designs must be applied to "articles"), the participants mostly agreed to the general direction for amendment. However, they raised significant concerns about issues such as the definition of the new graphic designs which are not applicable to articles, the acts of exercising such graphic design patent rights, and the distinction and overlap between graphic design patent protection and copyright protection.
After the public hearing, the TIPO continued to analyze related issues and is expected to propose a new version of the draft amendment in due course and announce it for public access allowing the public to provide further opinions. The changes involved in this amendment to the design patent system are significant. Depending on further adjustments to the amended provisions and the actual implementation of the corresponding examination guidelines by the TIPO in the future, design patent applicants will need to reassess and adjust their design patent filing strategies. Our firm will continue to monitor the progress of the amendment and timely share relevant information on the amendment content with our clients.
If you have any question, please feel free to reach out to us for further discussion.