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TIPO’s Views on Design Patents for Metaverse Associated Creations
Rising interest in "metaverse" related technologies has provoked discussion over how to protect associated inventions and designs through patents. On June 14, 2022, the TIPO (Taiwan Intellectual Property Office) published an article titled "Relationship between Metaverse and Design Patents" (link: https://www.tipo.gov.tw/tw/cp-85-910395-b3a07-1.html), which can serve as a reference for the metaverse industry to improve patent portfolios for the protection of creative achievements. The contents of the article are summarized as follows:
(1) Are metaverse-related creations eligible for design patent protection?
A metaverse comprises "hardware devices" (e.g., VR glasses) and "virtual digital designs" (e.g., images presented through the VR glasses). Regarding virtual image design, the 2011 amendment to the Patent Act introduced "graphic image designs" into the scope of design patents. In addition, the 2020 amendment to the Guidelines for Patent Examination further allows applicants to extend articles embodying a graphic image design to cover "computer program products."
Under the current Patent Act and patent practice in Taiwan, metaverse creators can file design patent applications for design of "virtual images" as well as for the appearance of "hardware devices" embodying these virtual images.
(2) Filing and examination of Metaverse design patent applications
Metaverse "virtual images" generally include "virtual spaces," "virtual articles" or "human-machine interfaces," wherein "virtual space" designs may be presented according to the drawing method of interior design patents; "virtual article" designs may be presented according to the drawing method of design patent application for articles; and "human-machine interface" designs may be presented according to the drawing method of graphical user interfaces in graphic image designs.
Since metaverse designs for "virtual spaces" and "virtual articles" are within the realm of virtual image design, applicants need to designate articles embodying the designs as "computer program products" rather than physical articles.
Regulations for the examination of metaverse designs are stipulated in the Patent Act and the Guidelines for Patent Examination. During the examination of creativeness of a "virtual image" design, the applicant may encounter a situation where the TIPO cites references disclosing identical or similar appearances of physical articles as prior art to negate the creativeness of said "virtual image" design on the ground that the claimed "virtual image" design of "computer program products" is an adoption of the appearance of said physical article.
(3) Patent right for metaverse designs
(3) Patent right for metaverse designs
The following criteria should be met for establishment of design patent infringement: (1) the accused product is the same as or similar to the article to which the design is applied and (2) the appearance of the accused product is the same as or similar to that of the design patent. According to the 2016 edition of "Evaluation of Patent Infringement Guidelines," the subject for determining whether the articles are the same or similar and whether the appearances of these articles are the same or similar is a "general consumer," which is the same as the subject for determining whether a design patent application has novelty.
As a physical article and computer program product are neither the same nor similar, a design for a physical article cannot be eligible prior art for negating the novelty of a patent application claiming identical or similar designs and directed to "computer program products." Similarly, when filing a design application for the appearance of a "physical article," the applicant should note that the patent right of the design application, once granted, cannot extend to "computer program products" having appearance that is the same as or similar to the "physical article."
Accordingly, if the applicant wants to prevent a third party from applying a design that is identical or similar to its "physical article" to "computer program products," it is advisable for said applicant to file an additional design application for "graphic image design" with the same design and designate such design as "computer program products," thereby obtaining complete design protection.
(4) Suggestions on patent portfolio for metaverse-related designs
In addition to filing design patent applications for designs of physical articles to prevent exploitation by third parties, designers of said physical articles should also consider the risk of plagiarism by producers or sellers of "virtual graphic images" (e.g., Non-Fungible Tokens, NFTs). Thus, when filing a design patent application for a physical article, it may be prudent to simultaneously file a "graphic image design" patent application designated as "computer program products." This allows a designer to obtain design patent protection for both "physical" and "virtual" designs.