A design to be patentable in Taiwan must be “original.” In other words, a design that simulates a known object is not original as required by the Patent Law. Moreover, in determining whether or not two designs are similar, the authorities generally would compare the two designs in their entireties and take into account the following factors: (1) the degree of similarity between the applied-to articles; and (2) the degree of similarity between the two designs per se.
In a recent invalidation action, the IP Office deemed the challenged design patent to be invalid in view of a prior art design cited by the invalidation petitioner, and rendered a Decision to cancel the design patent—a Decision further adhered to by the Board of Appeals. However, after the Patentee appealed the case to the IP Court, the IP Court revoked the decisions rendered by the IP Office and the Board of Appeals and ruled in favor of the Patentee.
The design at issue is a tool handle that can rotate clockwise and counterclockwise. The handle is flat and round, and takes a petal-shape with six pairs of alternately arranged teeth and recesses (Feature 1). The upper and lower sides of the handle are symmetrically convex (Feature 2). When being used, the handle is engaged with a driving element (which is not a claimed portion of the design) to form a T-shaped profile.
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| the challenged handle |
the challenged handle engaged with a driving element |
the cited prior art handle |
The design adduced by the Invalidation Petitioner is a petal-like ratchet handle with six pairs of alternately arranged teeth and recesses. While the upper side of the cited handle is in convex shape, the lower side is flat with a neck extending downward from the center.
The IP Office, the Board of Appeals, and the IP Court all opined that the two handles are similar in outer appearance in terms of Feature 1. In terms of Feature 2, the IP Office and the Board of Appeals both held that the challenged handle in its overall appearance is a simple adaption from the cited handle without yielding any new ornamental effect, and that the aesthetical features of the challenged handle are easily conceivable by one of ordinary skill in the art based upon the cited handle.
The IP Court, however, had a divided opinion. It held that the two designs are readily distinguishable in view of Feature 2. Particularly, the T-shaped profile formed by the challenged handle, together with the driving element, is discernible from that of the cited handle which has a neck extending downward from the center of its flat lower side. Only when the neck is omitted from the cited handle with slight modification, would it be possible that the two handles are deemed similar in the eye of one of ordinary skill in the art. In addition, the challenged handle and the driving element are two freely engageable and disengageable tools, whereas the cited handle together with its neck is an integrated, one-piece tool.
As a general rule, in the “Test for Originality”, the two designs concerned should be compared in their overall appearance to determine whether a design may yield an eye-appealing aesthetic effect over the other. The above case further suggests that a dominant portion of a design may play a significant role in the “Test of Originality”. It may render a design to be patentable over a prior design if said portion is eye-catching and prominent enough to discern between the two designs.