In recent years, digital industries have experienced rapid growth, and the applications of computer generated icons and graphical user interfaces have become increasingly diverse. Consequently, the provisions of Taiwan’s current Patent Act that relating to design patents are no longer sufficiently suited to industry practices. Therefore, the Taiwan Intellectual Property Office (“TIPO”) has proposed five key changes in the latest draft amendments to the Patent Act, aimed at enhancing the flexibility of the design patent system and aligning it more closely with international standards.
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Lifting the Restriction that Computer Generated Icons and Graphical User Interfaces Must be Applied to an “Article”
In 2013, computer generated icons and graphical user interfaces that were applied to an article started to receive Taiwan’s design patent protection. However, with the rapid development of emerging digital industries in recent years, the applications of computer generated icons and graphical user interfaces have become increasingly diverse, extending to areas such as the metaverse, virtual reality, and augmented reality. As such, computer generated icons and graphical user interfaces are often not limited to application on an “article.” To meet the practical needs of industry development and align more closely with international trends in design patent protection, the restriction in the original Patent Act that limited computer generated icons and graphical user interfaces to those that were applied to an “article” will be relaxed, thereby expanding the scope of protection.
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Allowing Applicants to File “Multiple Design Patent Applications”
Industrial designs often develop multiple similar designs under the same design concept. Recognizing the international trend where the United States, the European Union and many other countries that are members of the Hague Agreement allow multiple design patent applications to be submitted in one design patent application, the draft amendments to the Patent Act would allow for “multiple design patent applications.” In addition to the current “derivative design” system under the Patent Act, applicants with two or more similar designs may submit a single application and designate one of the designs as the original design.
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Extending the Grace Period for Design Patents
In countries such as the United States, Japan, South Korea, and in the European Union, the grace period for design patents is twelve months. Taiwan already extended the grace period for invention and utility model patents to twelve months in 2017. To further align the design patent grace period in Taiwan with international standards, the draft amendments propose to extend the grace period for design patents from six months to twelve months.
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Extending the Time Frame for Divisional Design Patent Applications
Under the current Patent Act, divisional applications can only be submitted before the original application or re-examination decision is finalized. The amendments propose to extend the time frame, allowing divisional applications to be submitted within three months after receiving the approval decision on the original application or re-examination.
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Resolving Disputes Over Patent Application Rights Through Civil Law
Disputes over the rights to apply for patents or the ownership of patent rights are often legal matters between individuals or individuals and legal entities; however, it is difficult for patent authorities to conduct in-depth investigations, which courts are able to do more effectively. This can make it difficult to effectively resolve such disputes. In practice, such disputes are usually resolved through mediation, arbitration, or court rulings, and once ownership is confirmed, relevant documents can be submitted to the patent authorities to request a change in the patent owner’s name. To effectively resolve disputes, the draft amendments propose to remove the provision in the Patent Act that allows for disputes over patent application rights or ownership to be brought to the patent authorities to adjudicate, and instead specifies that these issues should be resolved through civil law.
This is a translation of the original article in Chinese, which can be found here. Written by Betty Chen. Translated by George Bobyk.
18 November 2024