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Updated Taiwan Patent Examination Guidelines for Substantive Examination of Design Patent Applications
Promulgated by the MOEA (Ministry of Economic Affairs) on July 14, 2021, the updated Taiwan Patent Examination Guidelines (hereinafter referred to as “the Guidelines”) for Part III Substantive Examination of Design Patent Applications became effective as of the same date.
While the updates for Substantive Examination of Design Patent Applications range from Disclosure Principles of A Description and Drawing(s) in Part III, Chapter 1 Description and Drawing(s), to Formality Requirements, Priority Effects, Priority and Exceptions to Loss of Novelty or Non-obviousness, and Do’s and Don’ts on Substantive Examination in Part III, Chapter 5 Priorities, this article will primarily summarizes the provisions before and after the changes of Disclosure Principles of A Description and Drawing(s) in Part III, Chapter 1 Description and Drawing(s), and Priority and Exceptions to Loss of Novelty or Non-obviousness in Part III, Chapter 5 Priorities as the following:
1. With respect to Disclosure Principles of A Description and Drawing(s) in Part III, Chapter 1 Description and Drawing(s), page 3-1-1 and 3-1-2 of the Guidelines before revision states that “General knowledge refers to the knowledge known in the art to which the design pertains, including the information that is known or commonly used and the information documented in textbooks or reference books, or the matters known from rules of thumb. Ordinary skill refers to the general ability to perform design work. General knowledge and ordinary skill at the time of filing is called common knowledge at the time of filing for short in this Chapter.”
On the other hand, page 3-1-1 and 3-1-2 of the Guidelines after revision states that “General Knowledge refers to the knowledge that is known in the technical field to which the design pertains, including the knowledge that is well-known in a reference book or textbook, and also the information that is commonly used and understood from rules of thumb. Ordinary Skill refers to the general ability to perform design work. General knowledge and ordinary skill is collectively called Common Knowledge for short in this Chapter. Without loss of generality, a person having ordinary skill in the art (PHOSITA) is hypothesized as a single person; however, a group of persons may also be hypothesized as PHOSITA if it is more justified to deem that the PHOSITA consists of a group of persons in consideration of specific facts in the technical field to which the design pertains.”
What the TIPO primarily intends for this revision is to revise the interpretation of general knowledge from “the knowledge known in the art to which the design pertains, including the information that is known or commonly used and the information documented in textbooks or reference books, or the matters known from rules of thumb” to “the knowledge that is well-known in a reference book or textbook, and also the information that is commonly used and understood from rules of thumb”. In addition, the revision also supplies with supplementary description that the so-called PHOSITA is not limited to a fictitious person, but may be a group of fictitious persons when necessary.
2. Concerning Priority and Exceptions to Loss of Novelty or Non-obviousness in Part III, Chapter 5 Priorities, page 3-5-4 of the Guidelines before revision states that “where a design claimed in a design patent application is under any of the circumstances of exceptions due to loss of novelty or non-obviousness prior to the filing date, a request may be filed by the design patent applicant within six months after the occurrence of the facts, claiming that the design related to the facts does not form a part of prior art.” Also, “the effect of claiming priority is different from that of exceptions to loss of novelty or non-obviousness. The specified time period allowed to claim priority shall be within six months after the filing date on which an applicant has first applied for a design patent in a foreign country. However, if the applicant claims to be under any of the circumstances of exceptions due to loss of novelty or non-obviousness, the specified time period allowed to claim priority shall not to commence retroactively back to the date of exhibition.”
Nonetheless, page 3-5-5 of the Guidelines after revision states that “when a design claimed in a design patent application is under any of the circumstances of exceptions due to loss of novelty or non-obviousness prior to the filing date, such a circumstance is considered a disclosure of facts made by or against the applicant’s will. If the design patent application is filed within six months after the occurrence of those facts, the design details related to the said occurred facts will not be deemed as a part of prior art according to Section 4 Loss of Novelty or Non-obviousness of Chapter 3.” However, “the effect of exceptions due to loss of novelty and non-obviousness is different from the effect of priority. The former provision does not deem the design content related to facts of the disclosure laid open within a six-months grace period as prior art in determining whether a design claimed in a patent application for design is novel or non-obvious. That is to say, disclosure date is not the base date for determining the novelty and non-obviousness of a design. Therefore, if other applicants also file the same or similar design(s) during the grace period between the disclosure date and application date when a certain design patent applicant files his design patent application(s), the design patent application(s) filed later shall not be granted because the effect of the grace period cannot exclude the fact that they were filed later than the application(s) filed by others.
According to Article 122, Paragraph 3 of the existing Patent Act, “a disclosure made by or against the applicant’s will shall not be deemed as one of the circumstances that would preclude the grant of an design patent prescribed in the subparagraphs of Paragraph 1 or the preceding paragraph, provided that the concerned patent application is filed within six (6) months after the date of the disclosure.” The Patent Act has relaxed the grace period for claiming exceptions due to loss of novelty and non-obviousness and includes facts of a disclosure made by or against the applicant’s will. Consequently, the TIPO supplements two elements for claiming a grace period applicable to exceptions due to loss of novelty or non-obviousness to this updated Guidelines: (1) The concerned patent application is filed within six (6) months after the date of the disclosure; and (2) A disclosure is made by or against the applicant’s will.