This content is from: Asia Pacific

Examining the sufficiency of disclosure requirement for design applications

As a drawing or photograph constitutes the entire visual disclosure of what is claimed in a design application, it must be clear and complete. In relation to this, according to the Enforcement Rules of Taiwan's Patent Act which were in place prior to January 1 2013, applicants were required to submit a drawing or photograph illustrating the perspective and six views (i.e. front view, left-side view, right-side view, bottom view, top view and rear view) of the claimed design.

It was when the Amendment to the Enforcement Rules took effect on January 1 2013 that the aforesaid formality prerequisite was relaxed. After the change, a drawing or photograph is considered adequate if it contains a sufficient number of views that constitute a complete disclosure of the appearance of the claimed design.

Lately, the Taiwan Intellectual Property Office (TIPO) has expressed some intent to revise the current patent examination benchmark, making it clear that aspects not illustrated in the drawing shall be deemed to be the non-claimed portions of an article and form no part of a claimed design. However, it does not mean that TIPO will significantly relax the sufficiency of disclosure requirement. That is to say, under the general principle that the outer appearance of a claimed design must be depicted in the drawing or photograph in its entirety, a design application will still be rejected if the drawing submitted contains only a perspective view and a plan view.

The rationale behind this rejection is that a drawing cannot constitute a complete disclosure of the appearance of a design if not all the content of an omitted view(s) can be directly regarded as the "non-claimed portion of the design", or if any of the claimed aesthetic features of the design are regarded as not having been clearly depicted in the submitted views, in terms of appearance and shape of the article.

Due to the attitude taken by TIPO towards the sufficiency of disclosure requirement, applicants are advised to always submit a drawing or photograph that contains the perspective and six plan views, if at all possible, so as to forestall any potential rejection.

Ming-Chu Tsai

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