‘New design’ as referred to in Taiwan’s Patent Act means any novel design created with respect to the shape, pattern or colour of a portion of, or the entire article, or any combination thereof, thereby creating an ‘eye-appealing’, aesthetic effect.
On this score, any novel design susceptible of industrial application shall be granted a design patent, unless (i) prior to its filing date, an identical or similar design has been disclosed in a printed publication or made known to the public; or (ii) a design can be easily conceived from the prior art by a person of ordinary skill in the relevant art.
The above limitations shall not apply if the publication, or disclosure of a design was due to the following reasons and a patent application has been filed within six months from the date of publication, public use or disclosure:
The design was disclosed in a printed publication; or
The design was displayed at an exhibition sponsored or approved by the government.
Case study
In 2015, a design patent owner filed an infringement lawsuit claiming that the alleged infringer's sale of a product infringed on his design patent related to a teaching aid in the form of a ladder-type ramp.
When filing a counter-statement, the alleged infringer submitted evidence, namely, a copy of a webpage, attempting to prove that a design similar to the claimed design had been disclosed on the webpage eight months prior to the filing date and hence the claimed design was not novel or creative. After hearing the case, the IP Court ruled in favour of the alleged infringer.
The patentee later appealed the judgment but the matter was dismissed. The second-instance IP Court reasoned that:
(1) The claimed design is related to a teaching aid formed by a ladder-type ramp in a trapezoidal shape. The left side is a continuous ladder with 11 steps; the right side is formed by a slope section; and in the middle is a flat surface. An ‘eye-appealing’, aesthetic visual effect is created by the overall appearance of the design.
(2) The webpage submitted by the alleged infringer was made known to the public eight months prior to the filing date of the claimed design and thus is a valid prior art.
(3) It is found, via a comprehensive comparison, that (i) the distinction between the claimed design and the prior art resides in that the ladder section, the flat surface, and the slope section forming the prior art is not integrated; (iii) below the flat surface of the prior art is hollow and two upright pieces are provided on the other side of the flat surface; and (iii) underneath the slope section is hollow.
(4) Although the claimed design has integrated the ladder, the flat surface and slope into one single piece, and turned the hollow section below the flat surface and the slope into a solid one, such a modification can be easily conceived by a person of ordinary skill in the relevant art. Thus, the webpage submitted by the alleged infringer is sufficient to destroy the creativity of the claimed design.
The case emphasised the need for filing a design application within the six-month grace period, even though the outer appearance of the new design is somewhat different from the design already made known to the public through publication or exhibition.
Ming-Yeh Lin
Patent attorney, Saint Island International Patent & Law Offices
