New design patent practice explained – Taiwan Focus

SIgnificant changes have been made to design patent practice in Taiwan since January 1 2013. In particular, partial designs can now be protected, and protection by associated design patent has been replaced by derivative design patent. Furthermore, icons and graphical user interfaces (GUI) have become patentable subject matter, and a set of designs can be included in a single design application.

Partial design

Under the new patent practice, a design patent application can focus on either a complete or partial design. Under previous patent law, a patented design had to consist of configurations, patterns and colours or combinations thereof of a complete article. In other words, if the patented design embodied in a complete article contained multiple features of which some were novel and others were conventional while a counterfeit only copied the novel features (but not all the features) of the design, such counterfeiting might not fall within the scope of the design patent. To prevent infringers from evading liability by using the above strategy, the concept of “partial design,” which allows for focusing only on a design's novel feature(s), has been added to the new patent practice as a patentable design.

Expressing a partial design in drawings

Under the new design patent practice, solid lines are typically used to illustrate claimed portions of an article, and phantom or broken lines are used for the unclaimed portions of the article. Alternatively, colouring certain areas of an article with grey scale or translucency can be used to indicate the unclaimed portions of the article. Furthermore, a statement such as “the unclaimed portion is illustrated in broken lines” should be included in the design description section of the specification.

It is required that the drawings or photographs contain a sufficient number of views to clearly and sufficiently disclose the claimed partial design so that persons skilled in the art can understand the claimed design and be enabled to practice the same. Those views of an article that do not show the claimed partial design can be omitted.

Partial designs can be classified as (1) a component of an article (see the base of the indication light as shown below in figure A); (2) a partial feature of an article (see the surface patterns on the running shoe as shown below in figure B and the contours of a remote control as shown below in figure C); and (3) multiple components/features of an article (see portions of a desk lamp as shown below in figure D and portions of a package as shown below in figure E). In cases containing multiple components/features of an article as shown in figures D and E, even though there is more than one component/feature, they should be considered as a whole, and treated as a single design. The two or more components/features of such a design cannot be separately enforced.

Interpreting a claimed partial design

The scope of a partial design is based on the claimed portion (in solid lines) shown in the drawings. The unclaimed portion (in broken lines) can be used to interpret the article that embodies the partial design or the relationship between the environment surrounding the claimed portion and the claimed portion itself. The specification of a design patent application can be referenced for interpreting the partial design if necessary.