Partial Design and New Subject Matter in the New Patent Act Regime
published on 10 Jan 2012
Current Rules
For design patent protection provided under the current Taiwan Patent Act, the article to be claimed should be directed to a tangible object that can be individually put into commercial transaction by ordinary consumers. That is to say, each embodiment should show a complete component that can be individually put into commercial transaction. Partial designs claiming a fragmental portion that highlights characterized contours are not acceptable under the current patent law, which can be exemplified by the following shoe sole designs:
Graphical user interfaces (GUIs) and computer-generated icons (Icons) are types of user interfaces that allow users to interact with electronic devices through images rather than text commands. GUIs and Icons are now extensively used in computing, communication and consumer electronic (3C) devices. However, GUIs and Icons are not patentable subject matter under the current patent law.
New Law Regime
The Legislative Yuan on November 29, 2011 passed an amendment to the Taiwan Patent Act after three readings, in which partial designs, GUIs and Icons are all being admitted as patentable subject matter. This renders the new Act in line with the international trend to promote creative designs.
a. GUI / Icon designs
Based on the provision of Article 121.2 of the new Patent Act, patentable GUI or Icon designs should be applied to “articles.” Practical questions such as whether “applied to articles” means that a GUI or Icon design must be tied to hardware, or whether the opening of GUI design protection can be extended to GUI animation, to what extent a GUI or Icon design can be patented, and how a partial design should be presented with respect to the article applying this partial design are all unclear at this stage. It is expected that the publication of implementing rules later in 2012 will disclose further details in this regard.
b. Partial designs
The new Act provides that for design applications that are still pending at the time the new Act is enacted, the applicants shall be given three months to convert such pending applications to claim partial designs. However, for applicants intending to immediately file an application for their partial designs at the TIPO before the enforcement of the new Patent Act (for reasons such as securing priority dates), prolonging the pending duration of the application until the enactment of the new Act is one strategy that may be pursued by applicants desiring to seek patent protection on partial designs. For example, the applications may be filed with drawings as those in their original counterparts, then submission of the Chinese specification may be delayed to the very last day permitted under the patent practice, that is, six months from the filing date. Upon receipt of the Chinese specification, the TIPO has to issue an office action, according to the current law, requesting the applicant to amend the drawings to claim a complete component that can be individually put into commercial transaction. The prosecution may be further postponed by delaying the response to the office action for another six months. Therefore, the subject application will be kept pending for at least 12 months from the filing date, and therefore will eventually benefit from the new Act.
New Ground for 6-Month Grace Period
With regard to a grace period for obtaining design patent protection for a design that has been publicly disclosed, under the current patent law, a 6-month grace period is provided for a design that is publicly disclosed due to (1) voluntarily prior use in a government-hosted or approved exhibition, or (2) involuntary disclosure without the applicant’s consent. The new Patent Act provides a third ground for claiming the 6-month grace period, namely a voluntary disclosure of a design in a printed publication by the creator of the design within 6 months before the filing date. The printed publication can be any publication without being limited to academic publications. As may be expected, under the new patent law regime, applications for partial/GUI/Icon designs can also enjoy a 6-month grace period based on any of the above three grounds.
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