The newly amended Guidelines for Design Examination of Taiwan Intellectual Property Office (TIPO) took effect as of November 1, 2020.
To stay current with the latest development of the new technologies in the world and to summarize the experience in the design examination, TIPO decided to amend some chapters of the Guidelines for Design Examination (hereafter “Guidelines”). Five topics are amended this time, namely (I) Relaxing the requirements for disclosing design specifications and drawings; (II) Clearly defining the designs of constructions and interior design as protected objects of design applications; (III) Relaxing the regulations for applying for a design divisional application; (IV) Adding the computer program product to be an article to which a graph design may be applied; and (V) others.
We currently introduce topics (I) and (II) of the main points.
Relaxing the requirements for disclosing design specifications and drawings
Based on the current regulations in Taiwan, drawings of a design application shall fully disclose all views of a design. Only when the views are merely duplicated, in symmetry of other views of the design or based on other reasons, the views may be omitted from the drawings if the specification makes this explicitly clear. As to the “other reasons”, it in principle only applies to views which do not have specific feature and will not be noticed by consumers. Under examination, it is often controversial to determine whether the omitted views meet the requirements of the “other reasons”. Further, once the views are omitted based on the “other reasons”, the effect is the same as the portions that form no part of the claimed design in partial designs.
Thus, the amendments of the Guidelines in 2020 will relax the requirements of the disclosure of the drawings based on the concept of the partial design to solve the dispute. In other words, if views are omitted in a design application, they do not have to meet the above-mentioned requirements anymore. Once there are views not to be disclosed in a design application, they will be regarded as the portions which form no part of the claimed design, and the applicant does not have to specify the same in the specification.
Clearly defining the design of constructions and interior design as protected objects of design applications
Based on the regulations of Design Guidelines in 2005, a design must be a fixed type of personal property that can be independently traded by consumers but not a design of real estates, such as constructions like houses or bridges or interior design or gardens. This regulation has been deleted in 2013 during the amendments of the Patent Act, and TIPO announced that design patents did not limit to personal property which can be independently traded. However, it comes often to the question of whether a real estate such as a construction or an interior design belongs to the object of a design application or not. Thus, the amendments of the Guidelines in 2020 will clearly define the designs of constructions, interior designs and bridges may be the object of a design application.
As indicated in point (I), if there are views which will be omitted in this kind of design application, the parts that do not disclose in the views will be deemed to be the portions which form no parts of the claimed design as well.
Delivered by: Sandy WANG (Ms.) / Senior Partner
JAW-HWA INTERNATIONAL PATENT &
TRADEMARK & LAW OFFICES
www.jaw-hwa.com.tw
