New Patent Regulations Open Opportunity for Different Types of Designs

Taiwan partially revised the Chapter of Design in the Patent Examination Guidelines (“PEG”). The revision is effective as of November 1, 2020. Of the articles revised in the Patent Examination Guidelines, the most impactful deals with the patentability of buildings and interior designs as well as non-tangible image designs. The following presents the digest of the revision.

Omission of views

A curbing precondition to the permitted omission of views has been removed from the revised PEG.

In the previous version of the PEG, to meet the requirement of sufficient disclosure, a perspective view and multiple side views (six views - top, bottom, right, left, front, and rear) were generally necessary to demonstrate the appearance of a three-dimensional article. Omission of specific side view(s) was permitted only when the omitted side is “not conspicuous (or easily seen) for a general consumer when purchasing or using the article.” However the determination what is considered to be of “conspicuity” for an omitted side view could be easily disputable depending on the facts of each case.

The revised version of the PEG removes the readily observable requirement for any side view which has been omitted. It subsequently clarifies that, unless omission leads to non-enablement, any omitted sides will be by default deemed as “disclaimed parts” based on the concept of partial design. Only when the omission of sides is owing to identity, symmetry, or other specific causes, will the applicant be required to provide a description explaining that the omission is otherwise not a disclaimed part.

Design eligibility of macroscale constructions

         The acceptable design criteria is no longer limited to items which are small enough to hold in one’s hand, thanks to the revised version of the PEG.

Traced back to 2005, the old PEG stipulated that a design must be a movable property which has static form and could be traded independently. Particularly as a negative example, real estate was not eligible for a design patent. Although in 2013 the Patent Act was amendment to remove these prohibitions, some remained questioning whether buildings were eligible for design patents.

The revised version of the PEG in 2020 affirmatively specifies that the article onto which a design applies can be any article which can be produced through manufacture, including buildings, bridges, interior spaces or gardens, as well as anything which has been created via industrial or hand processes.

Likewise, one is required to submit sufficient views in order to apply for a design patent for buildings or interior spaces. Omission will by default be deemed disclaimed parts, unless particularly explained in written to the otherwise.

Protection for virtual designs

        Under the new PEG regime the applicant will be entitled to a graphic image design patent for intangible matters. The previous version of the PEG defined a graphic image as a computer-generated icon or a graphical user interface (GUI) that is primarily created by a computer program product (CPP). In addition to tangible IT devices, the new PEG introduces an intangible application or software such as a CPP to be the article to which a design necessarily resides. In other words, the new PEG confirms that a CPP is an industrially applicable product covered in the Patent Act. Hence the icons and GUIs are redefined as the virtual images “presented or projected” from all kinds of display of electronic devices. That being the case, the Patent Act does not protect program source codes or object files but only the visual presentation of graphics yielded as a result of program operation.

        Graphic designs can be given titles such as “an icon of a computer program product,” “a graphic user interface of a computer program product,” “a controlling dashboard of a computer program product,” “a window of a computer program product.”

        Identity and similarity of the products for a new design and potential prior art are critical for novelty determination. When one designates “computer program product” as the title of a design, the design is considered to be used on “all” sorts of electronic products. In other words, the extent of product similarity extends to “all” electronic products having computer programs. A likely consequence of this trade-off is that a new graphic on a computer program product would have to overcome a novelty bar of a rather difficult threshold. For example, an icon design on the CPP would be rejected for lack of novelty by a reference of a similar design residing on a refrigerator’s monitor. Conversely, a granted graphic image design on the CPP would have a larger claim scope and could hold designs on any monitors of tangible products similar.

        For the purpose of disclosure, a front view is sufficient for a graphic image when it is shown as planar image from a monitor or a projection. Conversely, when a design is three-dimensional imaging such as a hologram, virtual reality or even a design shown on curved or cylindrical screen, more views seen from different angles are inevitably necessary. As a new disclosure practice in the revised PEG, the drawings will only present the GUI or icon itself, without using solid lines or broken lines to contour an intangible article as a virtual carrier.

Literalizing the concept of degree of freedom

        A design solely dictated by function is not eligible for a patent. Whether an article is entirely functional is sometimes debatable. The revised PEG affirmatively introduces the concept of the “degree of freedom” for designs, which was previously discussed more in courts than in TIPO. According to this concept,  if the exterior of an article is entirely dictated by function without any degree of freedom for design to afford creation of visual appearance, it is considered solely to be a functional design and therefore not patentable. For example, a key blade and a key hole, or a bolt and a nut, are shaped in such a way so that they necessarily fit together perfectly (configurationally must-fit). There is no freedom of design because the design is an absolute result dedicated to engaging or assembly without any infusion of creative ideas. Hence the two pairs of examples are not eligible for design patents.