The Taiwan Intellectual Property Office (TIPO) recently announced an amended version of the substantive examination guidelines for design patents, which came into effect on April 1 of this year. TIPO stated that as 45% of design patent applicants were foreign corporations, the amended guidelines are mostly aimed at bringing guidelines into line with those of countries like the US and Japan.

The large-scale of these amendments will affect the amount of protection offered the applicant and five changes of particular importance:

1. When not wishing to assert claims for a particular color, there is a change to the patent drawing requirements as below:

Source: TIPO PowerPoint released on their website; Translation: Conor Stuart

Reason for revision: In order to more fully conform with the second part of Article 136 of the Patent Act: “The scope of the protection conferred by a design patent shall be determined by the drawing(s), and the description may be considered as a reference.”

2. When not wishing to assert claims for a particular color, there is a change to the patent drawing requirements as below:

When applying to patent part of a design, those not wishing to assert a specific color should use a broken or dashed line or other methods which make a clear distinction. If it is too difficult to use a dashed or broken line or other ways of distinguishing the claimed and unclaimed parts, applicants should use a single color to cover the parts of design which are not in the scope of the application (See Fig. 1). Only when the applicant wishes to assert a particular color for a part of the claimed design should they use the color for that part and state clearly that they wish to assert this color (as in Fig. 2)

Source: TIPO PowerPoint released on their website; Translation: Conor Stuart

3. Additional methods for differentiating between parts that are being claimed in the scope of the patent and those parts which are not in the scope of the patent.

Reason for revision: In order to more fully conform with the requirements of the fifth section of the 53rd rule in the Enforcement Rules of the Patent Act: “The parts in the drawing(s) which the design intends to claim and not to claim shall be presented in a manner by which the different parts can be clearly distinguished”. Fig. 3 below presents acceptable methods.

Fig. 3 Acceptable Methods (Source: TIPO PowerPoint released on their website; Translation: Conor Stuart)

4. A revision to the function of “the part which is not being claimed in the design”.

Reason for revision: This change was made because the term “part not claimed in the scope of the design”, can be used in many situations. Only when examining novelty and creativity will there be judgment and explanation of the position, size and layout of the “part being claimed in the scope of the design” as distinguished from the unclaimed part, hence the revisions below:

 Source: TIPO PowerPoint released on their website; Translation: Conor Stuart

5. The sixth chapter adds some examples of partial design and GUI/icon.

Reason for revision: In order to more fully explain the amendment relating to “partial design” and “GUI/icon”, 15 examples have been added, including the one below.

 Source: TIPO PowerPoint released on their website; Translation: Conor Stuart

The TIPO website has more information about the changes in Chinese.

Author: Conor Stuart Current Post: Senior Editor, IP Observer Education: MA Taiwanese Literature, National Taiwan University BA Chinese and Spanish, Leeds University, UK Experience: Translator/Editor, Want China Times Editor, Erenlai Magazine

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