Under Taiwan’s Patent Act, a design application can be filed for any novel design created with respect to the shape, pattern or color of a portion of, or the entire article, or any combination thereof, thereby creating eye-appealing aesthetic effect. However, no design application can be filed if, there has been found in any publication, an identical or similar design or there had existed a design that is easily conceivable by a person skilled in the art to which the claimed design belongs prior to filing.
In general, what is claimed in a design application is that as shown in the drawings comprising a perspective view and the six side views of the claimed design. A description of the aesthetic feature of a claimed design, as well as its appearance referred to in the specification may be referenced in determining the scope of the claimed design. By the same token, when the drawings submitted at the time of filing are not sufficient to disclose the aesthetic feature of a design, the application will be prone to rejection. On the other hand, the IP Office may search to locate a lot similar designs in view of the insufficiency of the disclosure of a design application, which renders the application to be more complicated. To this end, a recent design application which was dismissed even after filing administrative litigation merits a discussion.
A partial design application was filed for a portion of the design of “dynamic bearing”. It is specified in the specification that the bearing has a bearing body and the center of the bearing body is provided with a shaft hole. One end of the bearing body is provided with a circular groove at the outer interval of the shaft hole, which forms a circular boss provided at one end of the bearing body and can be used to identify the direction of the oil guide groove. .
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The IP Office searched and adduced a utility model patent entitled: "oil dynamic bearing structure" to reject the design application for being highly similar to the claimed design in outer appearance. According to the specification and drawings of the cited utility model patent, the top surface of the dynamic pressure bearing is provided with a circular groove for marking purposes, the groove section cut is V-shaped, and the top surface of the bearing body is in the shape of a plurality of surrounding circles when looking down. As such, the operator may have in mind that one end of the circular groove set by the bearing is on the same side as the output end of the shaft, which can avoid misplacement of the direction of the assembly.
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The applicant responded to the rejection in alleging that the claimed design is a "dynamic pressure bearing", the top surface of the bearing body has a circular groove which, in its sectional view, is in the shape of a trapezoid with a wider upper portion and a narrower lower portion. When looking down, one may have an impression that the groove on the top surface of the bearing presents the appearance of a circular ring belt formed by four concentric circular lines, and the flat bottom shape of the annular plane at the bottom of the groove gives one a wide and flat visual impression. On the other hand, the appearance of the V-shaped groove section disclosed in the drawings of the cited utility model patent as two opposite slopes, which obviously produced a distinct visual effect from that produced by the claimed design.
However, the IP Office did not agree with the applicant’s observation and adhered to its rejection that the claimed design is easily conceivable by those who have ordinary knowledge in the field of the art to which the claimed design belongs.
The applicant then appealed the case to the Board of Appeals and, in turn, to the IP and Commercial Court.
The IP and Commercial Court held that the claimed design and the cited utility model are one and the same product, having the same function and intended use. In terms of a comparison between their outer appearances, from the perspective view and top view of the claimed design, it can be seen that the aesthetical feature of the claimed design resides in the circular groove, and when looking down, the main visual impression is four concentric circle lines. The cited utility model, except for the annular grooves on the bearing being similar to those of the claimed design, the groove provided in the utility model is a V-shape in its sectional view. The visual feature of the circular groove, when looking down, is three concentric circles, being different from the trapezoid groove of the claimed design formed by four concentric circles. However, the difference is too minute to render the claimed design patentable over the cited utility model patent. In other words, the difference in the upper opening is only a simple change in the appearance of the concentric circle line of the annular groove due to the difference in the shape of the sectional view. A person with ordinary knowledge in the field to which the claimed design belongs may simply change the shape of the section of the annular groove to trapezoidal shape. The visual effect presented by the claimed design is easily achievable.
Although the applicant claimed that the section of the groove provided in the claimed design is a "trapezoidal" thick and flat ring-like plane, being vastly different from the narrow and sharp visual effect of the "V-shaped" section of the groove provided in the cited utility model , from the drawings and specification proposed by the applicant at the time of filing, it could be seen that they actually did not reveal the design of the circular groove of the bearing in the shape of the "trapezoidal" in its sectional view. The applicant further averred that the circular groove of the claimed design is in the shape of a "trapezoid" in its sectional view. However, Although it can be deduced from the drawings of the claimed design that the section of the circular groove is in a "trapezoidal" shape, the visual features presented are still only four concentric circle lines, and it is still difficult, without a sufficiency of disclosure, to assert that the claimed design may produce a visual impression dissimilar to the three concentric circle lines formed by the "V-shaped" section of the cited utility model. The IP and Commercial Court accordingly upheld the IP Office decision and dismissed the administrative litigation filed by the applicant.
Since the cross-sectional shape of the groove is not disclosed in the drawings of the claimed design, the four concentric circular lines of the groove clearly shown in the drawings naturally serve as the basis for comparison, which may expand the scope of the claimed design and increase the possibility of its similarity to prior designs. Moreover, when the section of the groove has characteristics in its appearance but is not disclosed, it is quite difficult for the applicant to claim the dissimilarities of a claimed design from a cited art in visual effect.
It is of consequence to disclose a claimed design in the specification and drawings to the extent as sufficient as possible.