New Patentable Subject Matters for Design Patent in Taiwan

derivative design patentAfter the amendment of Patent Act in 2013, the design patent has been broadened to include more patentable subject matters in Taiwan. Partial designs become available for application. Icons and graphical user interface (GUI) can be protected as “Graphic Images Design”. Also, a set of designs can be filed in one design application. Further, the derivative design patents allow similar designs to have independent patent rights. These newly available patentable subject matters provide wider possibilities and choices for the applicants to better protect their designs. We will introduce these new patentable subject matters for design patent respectively and the related regulations that should be paid attention to at the filing stage.

Derivative design patent allows similar designs to have independent patent rights.

The amendment of Taiwan Patent Act in 2013 has replaced the Associated Design Patent by the Derivative Design Patent. The derivative design patent allows the same applicant to file the original design application and derivative design application(s) for two or more similar designs. Generally, based on the first-to-file principle, when there are two or more identical or similar design applications independently filed, only the first application can be allowed. For two or more similar designs owned by the same applicant, the derivative design patent makes it possible to protect all of the similar designs, which is an exception to the first-to-file principle.

The effect of an application of a derivative design patent
  1. The patent right of derivative design patents can be enforced independently from the original design patent, and the derivative design patent has its own scope of similarity (range of protection).
  2. The patent term of derivative design patents starts from its publication date and expires on the same date as its original design patent.
  3. Since the derivative design patent has its own range of protection, even if the original design patent right has become extinguished or has been invalidated, the derivative design patent is still in force without being affected by the extinguishment or invalidation of the original design.