TIPS^®  Taiwan Intellectual Property Special

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Summary of the Draft of Patent Law Amendment Regarding Design Patents

The TIPO held a public hearing on June 26, 2006, to discuss the contents of the amended articles concerning design patents in the Patent Law. The participants of the hearing reached a common consensus on the reform of the system of design patents, the contents of the amended articles, and the implementing details. The important points are summed up as follows:

1.The changing of the Chinese designation for “design” patents;

2.Allowing the application of a “partial design” patent: In current practice, a design patent is obtained by taking the entire design of a product as a whole as statutory subject matter of protection. However, an applicant may file an application for a “partial design” in the future. In order to accommodate an application that was meant to be a partial design but was filed as a design of a complete product under the current law, by replacing the dotted lines with solid lines or deleting the dotted lines in the drawings, if the said application has not been examined before the implementation of the new law, the applicant may convert the filed application into a partial design application, by submitting supplement and amendments within three months after the implementation of the new law. Thus, for this kind of application, the applicant may, according to the actual circumstances, consider filing for an examination deferral and file for a supplement and amendment of drawings and description as set forth in the aforesaid regulation, after the implementation of the new law.

3.Abolishing the system of associated designs: According to the Patent Law, if the same person has two or more similar designs, he may seek patent protection by filing an associated design patent application. The amendment replaces associated designs with a new method of protection called “derivative designs.” An associated design is subordinate to its corresponding design, without a separate Letters Patent. If the corresponding patent right is revoked or dismissed, the patent right of an associated design will also be revoked or dismissed. A derivative design on the other hand, has a separate Letters Patent and independent patent right. That is to say, if its corresponding design patent is revoked or dismissed, a derivative design patent will not be revoked or dismissed accordingly.

4.Allowing applications for computer graphics (icons including animated computer graphics), and Graphic User Interface (GUI): The applications for these types of graphics must indicate the hardware, e.g. objects such as a computer monitor, a telephone, a mobile phone, on which the graphics are presented. Hence, these types of computer graphics must be filed in connection with an object, not by itself as an individual image or graphic.

5.Adding a system for derivative design patents: Derivative designs encompass several similar designs created under the same design concept. These derivative designs may each claim for an independent patent right. However, in order to avoid continuous derivations of a derivative design, which will lead to the over-expansion of its scope, the amendment regulates that a derivative design may only be derived from its original corresponding design, and no further derivations can be derived from the derivative design per se. A derivative design patent shall be filed before the publication of its original corresponding design.

6.Allowing patent applications for set-creation: Two or more designs that share the same design concept and the same category, and are normally sold as a set-creation, can file for a design patent under “set-creation.” When enforcing the right, the right of a set-creation design patent cannot be broken down into separate designs for each component of the creation; the right is for the set-design as a whole. If the components of a set-creation also possess patentability, separate applications may be filed. Moreover, since a set-design can only claim one scope of protection, it can only claim one priority right but not multiple priority rights.