Newsletter
Amendment to the Design Patent Examination Guidelines - relaxing the requirements for the disclosure of the specification and drawings and effecting division
The Ministry of Economic Affairs (MOEA) announced an amendment to "Volume 3–Design Patent Substantive Examination" of the Patent Examination Guidelines (hereinafter referred to as "Guidelines") on 29 September 2020. The amended version of the Patent Examination Guidelines took effect on 1 November 2020.
The amendment mainly addresses relaxing the requirement for the disclosure of the specification and drawings, clearly stipulating that an architecture design and an interior design can be subject matter for a design patent, relaxing the requirement related to a design divisional application, amending the stipulation related to a graphical design and others.
This article particular focuses on "relaxing the requirement for the disclosure of the specification and drawings" and "relaxing the requirement related to a design divisional application" and provides comparison between the amended Guidelines with the previous ones.
- "Relaxing the requirement for the disclosure of the specification and drawings"
Paragraphs 1 and 2, Article 53 of the current Enforcement Rules of the Patent Act stipulate: "In a patent application for design, the drawing(s) shall contain sufficient views so as to fully disclose the appearance of the claimed design; where the design is three-dimensional, the drawing(s) shall contain a perspective view; where the design is applied to a boundless plane in form, the drawing(s) shall contain an element view. The views stated in the preceding paragraph may include a perspective view, a front view, a rear view, a left side view, a right side view, a top view, a bottom view, a plan view, an element view, or other auxiliary views."
The previous Design Patent Examination Guidelines stipulate on page 3-1-9 that "sufficient drawings" indicates that the drawings will disclose each view of a design in a sufficient manner, such that the appearance of the entire claimed design can be fully disclosed. Accordingly, a view can only be omitted for the following reasons, or the drawings would be deemed failing to sufficiently disclose the design.
(1) the view is identical or symmetrical to another view;
(2) a general customer would not pay attention to such view when purchasing or using the object, or the view is completely planar and contains no design features;
(3) the object is extremely thin such that a general customer would not pay attention to such a view when purchasing or using the object; or
(4) the view is a simple cross-section and contains no design features.
The amendment to the Guidelines is based on the concept of partial design. In principle, the content of an omitted view will be deemed a "disclaimed portion" and the claimed design will accordingly belong to a partial design. Nevertheless, if a view is identical or symmetrical to another view or omitted due to extreme thinness of the object, a description is still required in the specification.
It should be noted that, even if a design is deemed a partial design, the views of the drawings are required to disclose all "claimed portion" in a sufficient manner. If the drawings are insufficient to disclose the appearance of the "claimed portion" or define the scope of the claimed design, a person skilled in the art would be unable to understand the claimed design from the limited drawings. In such case, the application would be deemed to violate the "enablement" requirement.
- Relaxing the requirement related to a design divisional application
According to the previous Design Patent Examination Guidelines, if the drawings initially filed only disclose one appearance applying to one article and do not contain any other reference views or state-of-use views, a divisional application cannot be filed for the "disclaimed portions" since the drawings do not clearly disclose substantially two or more designs.
In order to conform the requirement for the divisional application with that for effecting amendment and that for effect a conversion (e.g., converting a design application to a derivative design application or vice versa), i.e., "whether an amendment/a conversion goes beyond the scope of the of the specification and drawings initially filed," the amendment stipulates that if the content disclosed in the specification or drawings initially filed may substantially be two or more designs, the applicant may file a divisional application(s) for one or more designs (e.g., the design clearly disclosed in the reference views of the drawings or a component or content with different scope clearly disclosed in the drawings) disclosed in the specification or drawings initially filed, thereby pursuing another or more other applications.
According to the new Guidelines, an applicant may file a divisional application(s) during pendency of the parent application by changing a part of solid lines in the drawings initially filed to broken lines, or vice versa. However, the divisional application still has to comply with not going "beyond the scope of the specification or drawings as initially filed" as required.
Accordingly, the amended Guidelines would provide an applicant with a more flexible filing strategy and thus the applicant would have a more complete protection to the appearance of their design(s).