According to an explanatory report titled “Metaverse and Design Patents in Taiwan” the Taiwan IP Office (TIPO) published on June 13, 2022, the visual appearance of a virtual object, including a virtual object represented by an NFT, can be protected as a “computer image design.”
It is widely believed that views in the said Report will be adopted by examiners as the basic principles for examining metaverse/NFT-related design applications before the next update of the Examination Guidelines on Design Patent Applications (hereafter, the Examination Guidelines).
Computer image designs
While Taiwan’s current Examination Guidelines indicates that “computer image designs” include GUIs and computer icons, the Examination Guidelines’ wording leaves room for inclusion of other types of computer generated images in this category, hence the above opinion in the Report. Note the Report does not categorize designs of virtual objects as GUIs or computer icons.
Since November 1, 2020, “computer image designs” no longer need be applied to a device like a screen or a monitor. They can just be named as “a computer software generated image/GUI/Icon” to satisfy the product indication requirement. Please refer to our Newsletter published in September 2020 for more details.
For the time being, virtual objects are generally categorized by TIPO in LOC 14-04. It is likely that designs of virtual objects and NFT-represented designs will also be placed in this sub-class before an update of the LOC.
Examination
Taiwan does not require representations to show a device on which a “computer image design” may be displayed. Further, the TIPO’s Report indicates that representations of physical object designs can apply by analogy to designs of virtual objects, as the following examples show:
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| Translated from the TIPO's Report of June 13, 2022 |
The TIPO’s Report further indicates that “if for those with general knowledge of digital designs it is commonplace to convert a design in the real world into one in the virtual world, … then a physical car design can be cited as prior art against an application for a virtual car design in metaverse in terms of inventiveness [but not novelty].”
Scope of right
Despite its above-mentioned views on prior art, the said Report indicates that “to exclude others from converting a physical car design to an NFT-represented design…, it will be safe to patent the design on both the physical object … and the virtual image.”
Whether courts will adopt the same view is not clear yet. In 2017, in an infringement lawsuit, Judge Henry Tsai of Taiwan’s IP & Commercial Court held that whether two objects are similar should be determined in the designer’s view instead of the consumer’s view; if the designer in the art can easily convert the design from the patented product to the defendant’s product, then the two products should be deemed similar. Kwang Yang Motor Co., Ltd. v. Sheng Hsiang Electric Scooter Co., Ltd., Taiwan’s IP & Commercial Court (2017). Although the products in this case were all physical and this holding is not the majority view, it has the potential to take root in future trans virtual and physical design cases.