Newsletter
Draft Amendment to the Patent Act of Taiwan – Design Patent System
Draft Amendment to the Patent Act of Taiwan – Design Patent System
C. V. Chen/Daisy Wang
I. General Explanation of the Draft Amendment
I.1 1st Draft of Amendment
On October 18, 2024, the Taiwan Intellectual Property Office (TIPO) announced the 1st version of the draft amendment to certain provisions of the PATENT ACT. The main focuses of the amendment include: (1) revision of the design patent system, and (2) revision of the mechanism for the true patent applicants to reclaim their rights through civil proceedings and the improvement of related supporting measures. With respect to the provisions concerning the design patent system in the 1st version of the draft amendment, our firm has already provided a detailed introduction in the newsletter issued on February 27, 2025 (https://www.leeandli.com/EN/NewslettersDetail/7400.htm).
Regarding the 1st version of the draft amendment, the TIPO held a public hearing on November 4, 2024, to explain the content of the amendment and to solicit public opinions. Several suggestions and comments were raised by the participants. Participants of the public hearing generally expressed their support for TIPO's introducing the new design filing option, i.e., one design patent application may cover multiple similar designs (hereinafter referred to as "Multiple Design Application"), and they recommended that TIPO refer to U.S. practice in formulating application fee regulations (i.e., regardless of the number of designs included in a single application, the application fee should remain the same). As for the amendment concerning the graphic design patent system (i.e., relaxing the restriction under Article 121 of the PATENT ACT that graphic designs must be applied to “articles”), most participants agreed to the direction of amendment. However, they expressed significant concerns regarding issues such as the scope of a graphic design patent newly introduced into the patent system through the proposed PATENT ACT amendment, the types of acts constituting practicing a graphic design patent, and the distinction and overlap between graphic design patents and graphic copyright.
I.2 2nd Draft of Amendment
After the public hearing held on November 4, 2024, the TIPO continued to study relevant amendment issues and, on March 21, 2025, announced the 2nd draft amendments to the PATENT ACT. The key points of the 2nd draft amendments still include two main aspects: (1) revision of the design patent system, and (2) revision of the mechanism for the true patent applicants to reclaim their rights through civil procedures and improving related supporting mechanisms. The TIPO held a public hearing on April 17, 2025, to explain the content of the 2nd draft amendments and to invite participants to provide suggestions and opinions. Regarding the aforementioned 2nd draft amendment, the TIPO provides the following general explanations of the draft amendments:
1. Explicitly stipulate that computer-generated graphics and graphical user interfaces may constitute eligible subject matters for design patent protection. According to the 2nd draft amendment, in line with industrial development trends, computer-generated graphics and graphical user interfaces are considered as "articles," and they may independently serve as eligible subject matters for design patent protection. (Amended provisions: Article 121 and Article 124 of the PATENT ACT)
2. With reference to the Hague Agreement, the trends in European Union and the United States as well as other international trends, the 2nd draft amendment introduces the "Multiple Design Application") (i.e., one design patent application may cover multiple similar designs.) and correspondingly amends relevant provisions regarding correction of a design patent case, grounds for design patent invalidation, and other related matters. (Amended provisions: Article 129, Article 139, Article 140, and Article 141-1 of the PATENT ACT)
3. Extend the grace period for a design patent application from the current 6 months to 12 months. (Amended provisions: Article 122 and Article 142 of the PATENT ACT)
4. Amend the timing for filing divisional application(s) for a design patent case. Instead of requiring divisional application(s) to be filed before the re-examination procedure of the original application is concluded, the 2nd amendment allows divisional application (s) to be filed within three months after the service of an approval decision of the original application that is issued at the first examination stage or at the re-examination stage. Corresponding adjustments are made to the grounds for non-patentability and grounds for filing design patent invalidation actions. (Amended provisions: Article 130, Article 134, and Article 141 of the PATENT ACT)
5. Relax the types of disputes over the true ownership of a patent case. In practice, disputes over entitlement to apply for patent protection or entitlement to be granted patent right are not limited to employment relationships, but may also arise from contracting relationship, patent filing under impersonation, or other private law relationships. Therefore, the amendment allows the true right holder to resolve disputes through civil procedures and to apply with the patent authority for a change of patentee, with the addition of relevant supporting provisions. (Amended provisions: Article 10, Article 69, Article 140, and Article 141 of the PATENT ACT)
6. Clearly stipulate that, prior to the amended PATECT ACT takes effect, all invalidation cases and design patent applications that have not yet been decided before the implementation of the amended PATENT ACT, as well as the application of the newly extended grace period, filing of Multiple Design Applications, and timing for filing divisional applications shall apply. (Amended provision: Article 157-5 of the PATENT ACT)
This 2nd draft of amendment involves significant changes to design patent system. The following is a special explanation regarding changes to the design patent system in the 2nd draft of amendment.
II. Major Changes re Design Patent Practice Under the 2nd Draft of Amendment
II.1 Eligible Subject Matters for Design Patent Protection
The 2nd draft amendment explicitly stipulates that computer graphics and graphical user interfaces may independently constitute eligible subject matter for design patent protection by deeming computer graphics and graphical user interfaces as “articles” for design patent filing. The 2nd draft amendment also revises the subject matters not eligible for design patent protection.
A Current Practice
According to Paragraph 1, Article 121 of the PATENT ACT, a design refers to the creation of the shape, pattern, color, or any combination thereof, of the whole or a part of an article, by visual appeal; computer graphics and graphical user interfaces applied to articles may also be the subject of a design patent application in accordance with the law. According to the current Design Patent Examination Guidelines, computer graphics and graphical user interfaces refer to two-dimensional or three-dimensional virtual graphics generated by computer program products and displayed or projected via monitors of various electronic devices. The aforementioned “computer program products” refer to objects containing computer-readable programs or software, regardless of their external form. Since computer graphics and graphical user interfaces are, by nature, “appearance” creations with visual effects in terms of shape, pattern, color, or any combination thereof, and computer program products are broadly considered utilitarian “articles” usable in industry, computer graphics and graphical user interfaces generated by computer program products thus meet the requirement that a design must be applied to an article, without the need to file divisional applications for each type of electronic information product to which the graphic design is applied. If an application is filed solely for the graphic itself, without specifying that it is applied to a computer program product or other article, it shall be rejected on the grounds that it does not meet the definition of a design.
According to the current Design Patent Examination Guidelines, the types of graphic designs include the following:
(1) Computer Graphics (Computer Graphics/Icon)
Computer graphics refer to individual graphic units, each expressing a display message or an operable object (object), folder, or application through a single image. The types may be divided into static computer graphics and computer graphics with variable appearances.
(2) Graphical User Interface (“GUI”)
A graphical user interface refers to an overall graphical operation interface composed of two or more computer graphics, dialog windows, or other menu units, which helps users quickly access information or facilitates operation. The types may be divided into static graphical user interfaces and graphical user interfaces with variable appearances.
Since a graphic design with variable appearances involves multiple appearance variations derived from a single graphic design, it should be regarded as a single design for the purposes of recognition, thus complying with the one design per application rule. Each appearance variation does not constitute an independent design and cannot be individually claimed for patent rights; only the entire design comprising all appearance variations may be exercised as a whole. Applications for design patents for graphic designs with variable appearances must also comply with the requirement that “a design must be applied to an article” and may not be filed solely for the disclosed graphic itself.
The “design name” for a graphic design application should specify the article to which the graphic design is applied (e.g., “graphic for [article]” or “graphical user interface for [article]”), and may not be described merely as “graphic” itself. For example, the design name may be stated as “graphic for computer program product,” “graphical user interface for computer program product,” “operation menu for computer program product,” or “window screen for computer program product,” thereby obtaining broader protection without the need to file divisional applications for various types of electronic information products. If the applicant wishes to apply for a graphic design for computer graphics or graphical user interfaces in a specific field of articles, the “design name” may also specify the particular article, such as “graphic for mobile phone,” “graphic for ATM,” or “graphical user interface for washing machine.” If the claimed subject matter of the design patent application includes both the graphic design and the article to which it is applied (the whole or part of the article), the “design name” should mention both the graphic design and the article; for example, if the claimed design includes both the overall shape of a mobile phone and the graphic on its screen, the design name should be stated as “mobile phone with graphic.”
The “intended use of the article” for a graphic design is used to assist in describing the use or function of the article to which the graphic design is applied. If the article to which the graphic design is applied refers to a computer program product with general applicability that can be installed on various electronic information devices, the intended use of the article generally does not require special description and may be omitted. However, if the graphic design is applied to a specific field of articles and requires supplementary explanation, the “intended use of the article” may be specified in this section; for example, “The article to which this design is applied refers specifically to an automated teller machine (ATM) with functions such as withdrawal, inquiry, and transfer.” The intended use of the article may also be used to describe the manner of use or function of the graphic as applied to the article, so that a person skilled in the relevant art can understand the design content; for example, “The article to which this design is applied is an automated teller machine. The graphical user interface disclosed in the drawings includes graphic elements for withdrawal, inquiry, and transfer. When the user selects the withdrawal graphic element, a withdrawal amount menu will appear for the user to select or enter the desired amount to withdraw.”
B Changes in the 2nd Draft Amendment
In response to the rapid development of emerging digital industries and the increasing diversity of graphic designs utilizing digital technologies, and with reference to international trends in design protection as well as consideration of the practical needs of domestic industries, the design patent system has been specifically amended to better meet industrial requirements. On March 21, 2025, the TIPO announced the 2nd draft of amendment involving changes of certain provisions of the PATENT ACT, which notably includes the following:
(1) Eligible Subject Matters of Design Patent Protection
Computer Graphics and Graphical User Interfaces Eligible for Design Patent Protection
The restriction of “articles” as stipulated in Article 121 of the PATENT ACT is relaxed, and the provision is amended as follows:
Article 121
A design refers to the creation, through visual appeal, of the shape, pattern, color, or any combination thereof of the entire or a part of an article.
Computer graphics and graphical user interfaces shall be deemed as articles as prescribed in the preceding paragraph and may also be eligible for design patent applications in accordance with this Act.
(2) Subject Matters Not Eligible for Design Patent Protection
In line with the aforementioned amendment to Paragraph 2, Article 121 of the PATENT ACT (computer graphics and graphical user interfaces shall be deemed as articles as prescribed in the preceding paragraph and may also be eligible for design patent applications in accordance with the PATENT ACT), Subparagraphs 1 and 4, Article 124 of the PATENT ACT are specifically amended as follows:
Article 124
No design patent shall be granted for any of the following:
1. Purely functional designs. (Note: The original provision text was “purely functional shapes of articles”)
2. Pure artistic creations.
3. Layout designs of integrated circuits and electronic circuit layouts.
4. Designs contrary to public order or morality. (Note: The original provision text was “articles contrary to public order or morality”)
II.2 Amendment to the Grace Period for Design Patent Cases
A. Current Practice
The current provisions of Article 122 of the PATENT ACT are as follows:
Article 122
A design that can be utilized in industry may be applied for and be granted design patent in accordance with the PATENT ACT, provided that none of the following circumstances exist:
1. An identical or similar design has been disclosed in publications prior to the filing of the application.
2. An identical or similar design has been publicly practiced prior to the filing of the application.
3. The design was known to the public prior to the filing of the application.
Even if none of the circumstances listed in the preceding paragraph exist, a design patent shall not be granted if, prior to the filing of the application, the design could have been easily conceived by a person ordinarily skilled in the art based on prior art.
If an application is filed within 6 months after the occurrence of a disclosure made by the applicant’s own intention or without the applicant’s intention, such disclosure shall not be deemed as any of the circumstances set forth in Paragraph 1 or the preceding paragraph that would preclude the grant of a design patent. However, if the disclosure is made intentionally by the applicant through publication in an official patent gazette in accordance with the law in the Republic of China or a foreign country due to a patent application, the preceding provision shall not apply.
B. 2nd Draft of Amendment
With reference to relevant foreign legislative examples and in order to harmonize the grace period provisions of our country with international standards, Paragraph 3, Article 122 of the PATENT ACT is amended to extend the grace period for design patent cases to 12 months.
II.3 Introduction of the “Multiple Design Application System" into Taiwan
A. Current Practice
According to Article 129 of the PATENT ACT, an application for a design patent shall be filed for each design (the “one design, one application” principle); however, where two or more articles belong to the same category and are customarily sold or used as a set, an application may be filed for one design. Article 127 of the PATENT ACT further provides that where the same person has two or more similar designs, he or she may apply for a design patent and its derivative design patents; the filing date of a derivative design shall not be earlier than that of the original design; an application for a derivative design patent may not be filed after the publication of the original design patent; and the same person may not apply for a derivative design patent for a design that is not similar to the original design but is only similar to a derivative design.
B. 2nd Draft of Amendments
The TIPO's explanation of the 2nd draft amendment (Article 129 of the PATENT ACT) states: When applying for a design patent, if the designer has two or more similar designs, in accordance with Paragraph 1, Article 129 of the PATENT ACT, separate design applications for the design and its derivative design(s) must be filed. To simplify the application procedure and in consideration of the examination economy principle for the consolidated examination of two or more similar designs, and to provide applicants with a more flexible and user-friendly design patent application option, reference is made to international trends such as the Riyadh Design Law Treaty, the Hague Agreement as well as the trends in the European Union, and the United States, which allow filing one design patent application covering multiple similar designs. The “Multiple Design Application” system is thus introduced into the Taiwan design patent practice. Where the same applicant has two or more similar designs, it can file one single design patent application covering all the similar designs, with one design designated as the original design and the others as derivative designs. The TIPO's explanation of the current draft amendment also states: Where a design patent application covering a derivative design is filed and there is already a prior design application covering the original design, the provisions regarding Multiple Design Application shall not apply. In other words, if a derivative design application is filed simultaneously with the filing of the original design application, it shall not be allowed to file a Multiple Design Application so as to avoid complex similarity relationships existing among multiple design applications.
Accordingly, Paragraph 1 and Paragraph 3, Article 127 of the PATENT ACT are specially amended as follows (the current Paragraph 2 remains un-amended, and the current Paragraph 3 is renumbered as Paragraph 4 without amendment):
Paragraph 1, Article 129
Except as otherwise provided in this Act, an application for a design patent shall be filed for each design.
Paragraph 3, Article 129
Where the same person has two or more similar designs, the said person may file a single design patent application covering all the similar designs, with one design designated as the original design and the others as derivative designs.
II.4 Amendments in Line with the Introduction of the “Multiple Design Application” System
To accommodate the introduction of the “Multiple Design Application” system, the 2nd draft of amendment proposed the following changes:
(1) Paragraph 1, Article 139 of the original draft amendment is revised to add Subparagraph 1, which newly stipulates that the types of corrections for design patents include “deletion of a design.”
(2) In line with the aforementioned addition allowing design patent owners to make corrections by “deletion of a design,” Article 140 is specifically amended as follows:
Paragraph 1, Article 140 (Amended)
Unless with the consent of the licensee or pledgee, a design patent owner shall not abandon the patent right or make corrections as prescribed in Subparagraph 1, Paragraph 1, Article 139 (Note: correction by deletion of a design).
Paragraph 2, Article 140 (Newly Added)
Where there is a dispute regarding the ownership of a design patent, any abandonment of the patent by the design patent owner prior to the conclusion of mediation, the termination of arbitration proceedings, or the final and binding judgment of the court regarding such dispute shall be invalid.
Paragraph 3, Article 140 (Newly Added)
Where a design patent case is held in joint ownership, application for correction as prescribed in Subparagraph 1, Paragraph 1, Article 139 (Note: correction by deletion of a design) shall not be filed without the consent of all joint owners.
II.5 Grounds for Rejection of Design Patent Applications
In line with the relaxation of the timing for filing divisional applications for design patent cases and the introduction of the “Multiple Design Application” system, Article 134 of the draft amendment has also been revised. According to the revised Article 134, in order to prevent duplicate filings between a divisional application and the original application, in addition to other grounds for rejection of a design patent application, a violation of any of the following provisions are specifically listed as a ground for rejection of a design patent application:
(1) Paragraph 4, Article 130 of the PATENT ACT (i.e., the substantive examination of a divisional application shall be continued from the examination procedure already completed for the original application); and
(2) The first part of Paragraph 6, Article 130 of the PATENT ACT (i.e., a divisional application filed in accordance with the law shall be based on the content disclosed in the description or drawings of the original application and shall not be identical to the design that has been approved and granted)
II.6 Grounds for Filing an Invalidation Action Against a Design Patent
In conjunction with the introduction of the “Multiple Design Application” system, Subparagraph 1, Paragraph 1, Article 141 of the PATENT ACT has been amended to expressly provide that, in addition to other grounds for filing an invalidation action, a violation of any of the following requirements are specifically listed as a ground for filing an invalidation action against a design patent:
(1) a violation of Paragraph 1, Article 126 of the PATENT ACT (i.e., the description and drawings shall clearly and sufficiently disclose the design so as to enable a person skilled in the art to understand its content and to implement it),
(2) a violation of Paragraph 4, Article 130 of the PATENT ACT (i.e., the substantive examination of a divisional application shall be continued from the examination procedure already completed for the original application); and
(3) a violation of the first part of Paragraph 6, Article 130 of the PATENT ACT (i.e., a divisional application filed in accordance with the law shall be based on the content disclosed in the description or drawings of the original application and shall not be identical to the design that has been approved and granted)
Furthermore, according to Paragraph 3, Article 141 of the PATENT ACT as amended, where an invalidation action is filed based on any of the following grounds, such invalidation action shall be handled in accordance with the provisions in force at the time when the invalidation action is filed.
(1) a violation of Paragraph 4, Article 130 of the PATECT ACT i.e., the substantive examination of a divisional application shall be continued from the examination procedure already completed for the original application); and
(2) a violation of the first part of Paragraph 6, Article 130 of the PATENT ACT (i.e., a divisional application filed in accordance with the law shall be based on the content disclosed in the description or drawings of the original application and shall not be identical to the design that has been approved and granted)
In conjunction with the introduction of the “Multiple Design Application" practice, Article 141-1 of the PATENT ACT is newly added (as follows) under the 2nd draft amendment:
Article 141-1
Where a design patent contains two or more similar designs, an invalidation action can be filed against each design. The examination of the invalidation action referred to in the preceding paragraph shall be conducted separately for each design. Where a design patent is invalidated as a result of the examination of the invalidation action, the patent right shall be invalidated and such invalidation shall apply separately to each design.
II.7 Relaxation of the Timing Requirements for Filing Divisional Applications for Design Patent Cases
A. Current Practice
According to Article 130 of the PATENT ACT, where a design for which a patent is applied for is, in substance, two or more designs, a divisional application may be filed upon notification by the competent patent authority or upon the applicant’s request. A divisional application shall be filed before the original application is approved upon reexamination. The divisional application shall continue the examination procedure already completed for the original application.
B. 2nd Draft of Amendment
To provide applicants with greater flexibility in design patent portfolio management, Article 130 of the PATENT ACT has been amended for a design patent applicant to file divisional application(s) at the latest after an approval decision is issued at the reexamination. To accommodate the relaxation allowing divisional applications after approval, Article 130 is revised to specify the time limits and practical procedures for filing divisional applications as follows:
Article 130
Where a design for which a patent is applied for is, in substance, two or more designs, a divisional application may be filed upon notification by the competent patent authority or upon the applicant’s request.
A divisional application shall be filed within the following periods:
1. Before the original application is decided before the end of the reexamination stage;
2. Within three months from the date of service of an approval decision issued at the examination stage or at the reexamination stage for the original application.
The filing date of a divisional application shall be the same as that of the original application; if priority is claimed, such priority may still be asserted.
The divisional application shall not extend beyond the scope disclosed in the description or drawings of the original application at the time of filing.
For a divisional application filed pursuant to Subparagraph 1, Paragraph 2, Article 130 of the PATENT ACT, its examination shall be continued from the examination procedure already completed for the original application.
A divisional application filed pursuant to Subparagraph 2, Paragraph 2, Article 130 of the PATENT ACT shall be based on the content disclosed in the description or drawings of the original application and shall not be identical to the design approved; the divisional application shall continue the examination procedure prior to the approval of the original application.
The description or drawings of the original application as approved shall not be altered and shall be published as they were at the time of approval.
II.8 Acts of Practicing a Design Patent
According to the current PATENT ACT, the practice of a design patent shall apply mutatis mutandis to the provisions of Paragraph 2, Article 58 of the PATENT ACT regarding the "practice of an invention patent covering an article invention" (as follows):
Paragraph 2, Article 58
The practice of an invention patent covering an article invention refers to acts of manufacturing, offering for sale, selling, using, or importing the article under patent protection for the aforementioned purposes.
Accordingly, under the current PATENT ACT, the practice of a design patent covering a computer graphic design or a graphical user interface design shall be determined pursuant to Paragraph 2, Article 58.
In the 2nd draft amendment proposed by the TIPO, no revision or no new provision has been proposed regarding the acts for practicing a design patent. Therefore, after the implementation of the new PATENT ACT, the acts of practicing and the determination of infringement for various types of design patents (including the newly introduced computer graphical design patent and graphical user interface design patent) will still be governed by Paragraph 2, Article 58 of the PATENT ACT.
The ongoing amendment of PATENT ACT involves significant changes to the design patent system. Depending on the content of the amended provisions and the actual implementation of patent examination guidelines by the TIPO in the future, applicants for design patent will need to re-assess their design patent filing strategies. Our firm will continue to monitor the progress of the amendment and timely share relevant information regarding the amendment with our clients.