SAINT ISLAND INTELLECTUAL PROPERTY GROUP

Taiwan’s IP Office (TIPO) has accomplished a revision of the current design examination benchmark in a bid to keep pace with the development of emerging technologies, and also to institutionalize the regulations and practices. The Amendment which will take effect on and after November 1, 2020 goes substantially as follows:

1. Drawing

(1)	It is identified in the Amendment that those which are not illustrated in the drawing shall, in principle, be deemed the non-claimed portions and form no part of a claimed design.
	For example, in case a back view is omitted from the drawing (see below) of a design application for a wall clock, the TIPO will not necessarily designate a deadline for the applicant to submit the omitted view; instead, the appearance of the omitted back view may be deemed to form no part of the design.
(2)	According to the pre-amended Examination Benchmark, only if a plan view is a mirror image or symmetrical to another plan view, or if lay consumers, when making purchase of or using an article, would ignore the appearance of a view, will the said view be allowed to be omitted. However, whether the appearance of a view may be easily ignored by lay consumers is a matter of subjective judgment and has thus sparked not a few controversies in the past.
	Accordingly, the Amendment is to relax the above principle by using the concept of partial design. Omission of a view is allowed when (i) two plan views are mirror-imaged or symmetrical; or (ii) the appearance of an omitted view would be evident from the other views. So long as the applicant specifies in the design description reasons for omission, the omitted view will still be deemed to be part of the design.
	Taking the following views as an example, since the front, rear, right and left side views are flat and include no surface ornamentation, they can all be omitted.
	If a plan view is omitted not due to either of the above reasons such that the claimed design is not completely disclosed in the drawing, the omitted plan view will be deemed to be the “non-claimed portion” of the design, and the applicant may not be notified to file the omitted view. In other words, it is of no consequence whether consumers would ignore the appearance of an omitted view or whether an omitted view includes surface ornamentation.
(3)	According to the Amendment, if the drawing of a design application does not contain a sufficient number of views which are clear and complete to constitute a full disclosure of the appearance of the claimed design, or if the ornamental features of the design are not clearly or completely depicted in the drawing, the design application (as exemplified below) will be rejected for not fulfilling the “sufficiency-of-disclosure” requirement.
	The following is a flowchart mapping out the new examination process regarding the issues above:

2. Designs for immovable properties

The restrictions on filing design applications for buildings, houses, bridges, gardens, and interior designs alike were lifted after implementation of the Examination Benchmark amended in 2013.  In other words, the eligible subject matters are no longer limited to those which are movable.  The latest Amendment takes a further step by positively reciting interior designs, and designs for immovable properties, including buildings, houses, bridges and gardens as patent eligible.  For instance, a design application can be filed for part of a kitchen as shown below.  However, it should be noted that anything that is not illustrated in the drawing shall be deemed the non-claimed portion of a design.

                            
3. Divisional Filings

According to the pre-amended Examination Benchmark, it is not allowed to file a divisional application directed to the non-claimed portion of a design application (original design application) in case only one single article is illustrated in the drawing of the original design application without any showing that the claimed design is applicable to multiple articles.

The Amendment is to relax this restriction so that a divisional application can be filed for any design which has full support from and does not extend beyond the content of the original design application. The following exemplified divisional applications are all acceptable to the TIPO according to the Amendment:

(1)	A divisional application for a design disclosed in the referential drawing of the original design application
(2)	A divisional application for a component clearly illustrated in the drawing of the original design application
(3)	A divisional application claiming a scope different from that of the original design if it has full support from the disclosure of the original design application.

4. Articles to which a graphic image design can be applied will include “computer software product”

According to the pre-amended Examination Benchmark, the articles to which graphic image designs (including computer-generated icons (CGIs) and graphical user interfaces (GUIs)) can be applied include “screen”, “monitor”, “display panel” or other display devices. Nonetheless, parallel to the prosperity of information technology,  images generated by using projectors or virtual reality technology should no longer be excluded from design protection, especially when most of image infringers are not hardware manufacturers but computer software producers. Thus, the Amendment sets out that:

(1)	CGIs and GUIs are re-defined as two-dimensional or three-dimensional virtual graphics generated by computer software products and displayed or projected through a variety of electronic devices.
(2)	The articles to which a graphic image design can be applied now include “computer software product” and the title of such designs may be defined as, “computer software generated icon/graphical user interface/operation menu/ display screen”, to name just a few.  Certainly, it is still possible to identify, as in the past, in the title the electronic product to which a graphic image design is applied, such as “icon on a washing machine”, “image on a screen”, or “graphic user interface on a display”.
	If “computer software product” is included in the above manner in the title of a graphic image design, rather than a specific electronic product, all identical or similar graphic image designs applied to electronic information products will be included in the search for “similarity test.” On the other hand, physical articles to which identical or similar designs or patterns are applied will be excluded from the search.
	For instance, if a graphic image design application entitled “computer software generated icon” is filed, prior design patents/applications for “icons on the console of washing machine”, and “icons on TV” and so on so forth will all be included in the search, which is otherwise if the prior designs are “graphics or patterns on wrapping paper or fabrics”, or “graphics on physical buttons of mobile phones”.
	If a graphic image design application entitled “mobile phone icon” is filed, prior designs for “icons on a washing machine (console)” etc. will all be excluded from the search.
(3)	In the drawing of an application for a graphic design, there is no longer a need to illustrate the carrier, such as “screen”, “display” or “display panel” with a dashed line so as to show that it is a non-claimed portion of a graphic image design. See Figures 9-12 to 9-14 below. On the other hand, a dashed line can be used to illustrate the non-claimed portion of a graphic image design, such as the environment thereof. See Figure 9-15 below.
	If a graphic image design is formed by multiple separable units, or if it is necessary to clearly illustrate in the drawing what is claimed in a graphic image design application so as to avoid confusion, a boundary line drawn in a dashed or other broken line must be shown in the drawing. See Figure 9-16 below.