In accordance with the Patent Act in Taiwan, a design application can be filed for the shape, pattern or color of a portion of, or the entire article, or any combination thereof, thereby creating eye-appealing aesthetic effect. However, a design shall not be granted a design patent if a similar or identical design has been previously published or would have been easily conceived by a person with ordinary skill in the art prior to filing. Therefore, in the test of patentability, a key factor is whether the difference between an applied-for design and a prior design is a simple variation that would not create a distinct visual effect in the overall appearance of the design. This teaching is highlighted in a Ruling by the Intellectual Property and Commercial Court rendered in 2022.
The design patent in question is related to an "extruded aluminum solar panel support post" as illustrated in the following drawings. It is in the form of a rectangular bar with a groove on the back side in the depth direction, and protruding edges on the front side towards the left and right. The cross-section of the support post features two symmetrical diagonal reinforcement ribs arranged within a rectangular frame in the center, creating symmetrically arranged triangular frames on both sides and a trapezoidal frame near the center.
A third party filed an Invalidation Action against the design patent accompanied by evidence.
Exhibit 2 was submitted to challenge the patentability of the design patent , in which a support structure for a solar panel is shown. Especially in Fig. 3, there is illustrated an upright extruded aluminum support post 2. The cross-section of the support post 2 consists of a main support plate 201 and multiple secondary support plates 202 arranged around it to form a hollow rectangular body. The main support plate 201 extends beyond both sides of the support post, and there is a groove between the reinforcing ribs 203 on the inner sides of the support post.
In Figure 2 of Exhibit 3, it is shown that the upright frame 10 is equipped with two wing-shaped stop pieces 101 and 102 that slant outward from the center.
Upon examination, the Intellectual Property Office deemed the Invalidation Action filed to be ill-founded.
The IP Office found that Exhibit 2 indeed illustrates a support post in the shape of a rectangular bar, a groove on the back side in the depth direction, and protruding edges on the front side. However, it fails to generate visual effect the same as or similar to the design patent. The evidence showed that the reinforcing ribs 203 are symmetrically arranged and perpendicular to the main support plate 201, with the central part of the main support plate 201 forming a rectangular frame. On the other hand, the design patent, as viewed from its perspective, top and bottom views, features "two symmetrical diagonal reinforcement ribs arranged within the central rectangular frame of the support post, forming symmetrically arranged triangular frames on both sides and a trapezoidal frame near the center, with the diagonal reinforcement ribs not extending beyond the central rectangular frame.” The two designs are visually distinct. Similarly, Exhibit 3, with its Figure 2 depicting frame 10 with two wing-shaped stop pieces 101 and 102 slanting outward from the center, which forms shapes that differ from the patented design in question, as shown in the perspective, top and bottom views, which features symmetrically arranged triangular frames and a trapezoidal frame near the center, with the diagonal reinforcement ribs not extending beyond the central rectangular frame.
The IP Office is of the opinion that a minute difference between two designs may impart a noticeable impression on consumers. The visual effect generated by the design patent, such as the "symmetrically arranged triangular frames and a trapezoidal frame near the center formed by the diagonal reinforcement ribs within the central rectangular frame” should be sufficient to differentiate the design patent from the prior art illustrated in Exhibits 2 and 3.
Not being satisfied with the Decision rendered by the IP Office, the invalidation petitioner pursued an appeal with the Board of Appeals and in turn a petition for administrative litigation with the Intellectual Property and Commercial Court.
The invalidation petitioner argued that the two parties’ designs are both in the form of a rectangular body. The only difference resides in the two triangular frames which occupy a minimal visual area in the overall visual appearance. In other words, the frames can only be observed from a limited angle and are not particularly noticeable parts during use since they ae encapsulated within the post. Therefore, the design patent and the design illustrated in Exhibits e 2 and 3 are essentially similar in overall outer appearance, especially when triangle and rectangle are both basic geometric shapes.
The above assertion was, however, not convincing to the Court. The Court assumed that the design patent pertains to an extruded aluminum product, which is in a fixed cross-sectional shape. Aluminum is extruded into a designed mold to produce a linear product with the same cross-sectional shape. The "diagonal reinforcing rib" of the design patent is not a standalone component but rather forms an overall visual effect in conjunction with the "central rectangular frame” of the design patent. Specifically, as illustrated in the perspective and top views, the aesthetic features of the design patent include those generated by the "diagonal reinforcing ribs arranged symmetrically inside the support column section of the central rectangular frame" and the "triangular frames symmetrically arranged on both sides and trapezoidal frames closer to the center, with the diagonal reinforcing rib not exceeding the central rectangular frame." These features occupy a significant visual area of the design patent, which is sufficient to influence the overall visual impression given by the design patent. Neither Exhibit 2 nor Exhibit 3 discloses the feature of "triangular frames symmetrically arranged on both sides and trapezoidal frames closer to the center, with the diagonal reinforcing rib not exceeding the central rectangular frame." As mentioned above, this difference cannot be readily derived by directly substituting evidence 2 and evidence 3. It requires the knowledge possessed by those skilled in the art to conceive of the creation of the design patent.
Therefore, Intellectual Property and Commercial Court dismissed the petition for administrative litigation filed by the invalidation petitioner.
From the court's observation, it is evident that in the test of the patentability of a design, the design and the cited prior art should be compared in terms of the overall appearance from the viewpoint of a person ordinarily skilled in the art at the time of filing. The differences of two designs should be those that could not be easily detected through simple addition or arbitrary arrangement of individual parts. By this token, in the crowded area of aluminum extrusion products, the distinctive visual effect achieved by "triangular frames symmetrically arranged on both sides and trapezoidal frames closer to the center" using the shape of diagonal reinforcing ribs is outstanding and has not been disclosed in the relevant art field. Such a reasoning, especially for a product falling in a crowded area, is sufficient for a design patent owner to aver that his design is not easily conceivable from the prior art.