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JURISDICTION REPORT: TAIWAN


NEW ACT CHANGES RULES FOR PARTIAL DESIGNS


Candy Chen and Crystal Chen Tsai Lee & Chen


Current rules For design patent protection provided under the Taiwan Patent Act, the design claim should be directed to a tangible object that can be individually put into commercial transaction by ordinary consumers. Tat is to say, each embodiment should show a complete component that can be individually put into commercial transaction. Partial designs, such as those shown below, claiming a portion highlighting characterised contours are not acceptable under the current patent law.


“APPLICATIONS MAY BE FILED WITH THE SAME DRAWINGS AS THOSE IN THEIR ORIGINAL COUNTERPARTS, AND THEN SUBMISSION OF THE CHINESE SPECIFICATION MAY BE DELAYED UNTIL THE VERY LAST DAY PERMITTED.”


Graphical user interfaces (GUIs) and computer-generated icons are types of user interfaces that allow users to interact with electronic devices through images rather than text commands. GUIs and icons are now extensively used in computing, communication and consumer electronic devices. However, GUIs and icons are not patentable subject matter under the current patent law.


New law regime Te Legislative Yuan on November 29, 2011 passed an amendment to the Taiwan Patent Act aſter three readings, in which partial designs, GUIs and icons are all admitted as patentable subject matter. Tis renders the new act in line with the international trend to promote creative designs.


GUI and icon designs Based on the provision of Article 121.2 of the new Patent Act, patentable GUI or icon designs should be applied to ‘articles’. Practical questions such as whether ‘applied to articles’ means that a GUI or icon design must be tied to hardware, or whether the opening of GUI design protection can be extended to GUI animation, to what extent a GUI or icon design can be patented, and how a partial design should be presented with respect to the article applying this partial design, are all unclear at this stage. It is expected that the publication of implementing rules later in 2012 will shed some light.


Partial designs Te new act provides that for design applications that are still pending, applicants shall be given three months to convert pending applications to claim partial designs. However, for applicants intending to file an application for their partial designs immediately at the Taiwan Intellectual Property Office (TIPO) before the enforcement of the new Patent Act (for


www.worldipreview.com


reasons such as securing priority dates), prolonging the pending duration of the application until the enactment of the new act is one strategy that may be pursued to seek patent protection on partial designs. For example, applications may be filed with the same drawings as those in their original counterparts, and then submission of the Chinese specification may be delayed until the very last day permitted, ie, six months from the filing date.


Upon receipt of the Chinese specification, the TIPO has to issue an office action, according to the current law, requesting the applicant to amend the drawings to claim a complete component that can be individually put into commercial transaction. Te prosecution may be further postponed by delaying the response to the office action for another six months. In this way, the subject application will be kept pending for at least 12 months from the filing date, and therefore will eventually benefit from the new act.


New ground for six months’ grace Under the current patent law, a six-month grace period is provided for a design that is publicly disclosed due to voluntary prior use in a government-hosted or approved exhibition, or involuntary disclosure without the applicant’s consent. Te new Patent Act provides a third ground for claiming the six-month grace period, namely a voluntary disclosure of a design in a printed publication by the creator of the design within the six months before the filing date. Te printed publication is not limited to academic publications. As may be expected, under the new patent law regime, applications for partial/GUI/icon designs can also enjoy a six- month grace period based on any of the above three grounds.


Candy K.Y. Chen is a patent attorney and partner at Tsai Lee & Chen. She can be contacted at: ckchen@tsailee.com.tw


Crystal J. Chen is an attorney at law and partner at Tsai Lee & Chen. She can be contacted at: cjchen@tsailee.com.tw


World Intellectual Property Review January/February 2012 87


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