TIPS^®  Taiwan Intellectual Property Special

Draft to Propose Open Protection to Partial Designs, Substitute Derivative Designs for Associated Designs

The long-yearning protection for partial designs has finally been considered by the TIPO.

Despite strong advocacy from the industry for the admission of partial designs for articles as statutory subject matter, the TIPO continued insisting on that under the effective Patent Law, a design seeking patent protection must be applied to an “article.” The current Guidelines were thus formulated by defining that a design must be applied to an article that is of a concrete object and can be individually put
into commercial transaction by ordinary consumers. Accordingly, a design applied to a “portion” of an article is still deemed to fail to meet the definition of design patent and therefore unpatentable, as of this day.

However, the TIPO realized the global trend of expanding design patent protection to partial designs and the need from the industry in seeking patent protection for designs applied to portions of articles, such that the scope of design protection would not be unduly limited by the drawings illustrating the designs applied to entire articles, and thus undertook the project of drafting a Draft Patent Law that will distinctly extend design patent protection to a design applied to a portion of an article.

In the Draft, the term “design” is re-defined to refer to the entirety of a part of any creation made in respect of the shape, pattern, color, or combination thereof of an article and through appealing to eyes. Computer-generated icons and graphic user interfaces are also included as part of the “designs” referred in the Draft.

The Draft also proposed to abolish “Associated Designs,” which refer to “a creation made by a person, which is originated from and similar to an original design of the same person,” provided under the current Patent Law. In the current Patent Law, the scope of protection for an associated design right is limited because the associated design patent right shall not be asserted separately, nor shall its effect be extended to the scope of similarity, and the patent right of an associated design is attached to the patent right of the original design. A new “Derivative Design” system is proposed in the Draft to substitute for the “Associated Design” system, where a derivative design right shall have effect to the scope of similarity. However, the acts of disposing, such as assignment, trust, licensing or pledge, of the derivative design are dependent on its original design.

Transitional clauses will also be provided for design patent applications that were forced to claim the entirety of the design for an article, as a result of the currently effective Patent Law, to revert to the drawings illustrated in the priority applications that claim a part of the design.

The general public eagerly welcomed the new proposals, but unfortunately, the Draft still needs to await proposals for the provisions governing Invention and Utility Model patent rights, which have yet to be drafted by the TIPO and might take another one year.

Statistics for Rate of Successes for Patent-related Administrative Remedies The TIPO provided the statistics for rate of successes for patent-related administrative remedies in recent 3 years as follows. It can be observed from the numbers that the rate of success in the Administrative Appeals before the Committee of Administrative Appeals has gradually increased over the years, while that in Administrative Litigation before the Taipei High Administrative Court decreased. Even though the Taiwan judicial system adopts Civil Law System, the increment before the Committee of Administrative Appeals may still be the result of the Committee adhering to judgments rendered by the Taipei High Administrative Court over the past few years. However, the overall rate of lowering than 10% indicates that both the Committee of Administrative Appeals and Taipei High Administrative Court respect the majority of the decisions issued by the TIPO and will only revoke the original decisions where the decisions are in violation of the basic principles of administrative laws.