Metaverse-Related Design is Patentable Subject Matter

The metaverse is like a bridge that connects the physical world to the digital world. It is a virtual space people can visit and spend time in. Through the metaverse, people are exploring new ways of interacting and doing business, and such a digital space is shaped by its visual appearance, including 3D objects and motion graphics. Thus, the rapid growth of the metaverse has led to the emergence of various industrial designs.

Many people are doubtful as to whether metaverse-related designs constitute patentable subject matter. In order to encourage the filing of more metaverse-related applications for IP protection, the Taiwan Intellectual Property Office (TIPO) has published an article providing guidance for the protection of metaverse-related designs. This article may serve as an examination standard before the corresponding revision is made for the patent examination guidelines.

A metaverse-related design (or creation) is generally deemed to be a kind of icon or graphical user interface (GUI) applied to “computer program products,” with a visual appearance that can be protected by a design patent. According to Article 121 of the Taiwan Patent Act, “‘design’ means the creation made in respect of the shape, pattern, color, or any combination thereof, of an article as a whole or in part by visual appeal. For computer generated icons (Icons) and graphical user interfaces (GUIs) applied to an article, an application may also be filed pursuant to this Act for obtaining a design patent.”

Metaverse-related designs can be classified into three groups, namely virtual space, virtual objects, and human-machine interface. When filing an application, applicants may present a virtual space in accordance with interior design, present virtual objects including non-fungible tokens (NFTs) and game treasures in accordance with object design, or present a human-machine interface in accordance with GUI. In other words, applicants may present the design based on the type that has been recognized as being patentable subject matter. Applicants must heed the requirement that the article to which the design applies must be recorded as “computer program products.”

During substantive examination, the determination of whether the appearance is identical or similar to that of prior art designs is based on the corresponding types (i.e., interior design, object design, and GUI). Also, it must be determined whether the article to which the design applies is identical or similar to those to which the prior art designs apply. As mentioned above, the metaverse-related design applies to “computer program products,” whose use is not identical or similar to the use of a physical object existing in the physical world. Thus, a physical object will not be cited against the novelty of a metaverse-related design. For example, if someone transforms the appearance of a car into a virtual car in the metaverse and then files an application for “an image applied to computer program products,” the physical car will not be cited against the novelty of the virtual car.

However, in the examination of creativeness, prior art designs are not limited to the technical fields of the identical or similar articles to which the design applies. If applicants merely transform the appearance of an article existing in the physical world to a virtual appearance in the metaverse (i.e., computer program products), this is likely to be regarded as a design which can be easily conceived and thus be rejected on the grounds of being devoid of creativeness. Therefore, in the example mentioned above, the physical car may be cited to comment on the creativeness of a virtual car.

TIPO also explained the enforcement of metaverse-related design rights. According to the Directions for Determining Patent Infringement, it is necessary to decide whether the articles to which the patented design and the accused design apply are identical or similar, and to determine whether the appearances of the two designs are identical or similar. The determination of whether the two articles are identical or similar is mainly based on the use of the articles from the perspective of an actual purchaser or an ordinary consumer. After a design right has been granted, the scope of protection only extends to the virtual appearance generated by the applied "computer program product" and not to the appearance of the physical object. The situation of an applicant wishing to protect his or her designs in both the real world and the metaverse with a single design patent is not possible at this stage as TIPO has not yet made a provision for this occurrence. In order to obtain full protection, the applicant needs to file separate applications for both the real and the virtual objects before one of the applications is published. This differs from a trademark application that can be filed separately for additional designated goods or services even after the first application has been published.

Nevertheless, being protected by a design right does not mean that the computer program works that are used to generate icons or GUIs are also protected by copyright. Indeed, there are still many legal issues that need to be resolved regarding intellectual property rights in the metaverse. For example, digital assets formed by blockchain technology cannot be easily destroyed. Infringement exclusion or prevention in the metaverse can be challenging. In addition, intellectual property rights are territorial; the governing jurisdiction is questionable in the realm of the virtual world. These issues need to be more clearly defined or interpreted by case law or by the creation of new laws regarding new technology.

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