On 29 September 2020 the Ministry of Economic Affairs announced an amendment to Volume 3 – Design Patent Substantive Examination of the Patent Examination Guidelines. On 1 November 2020 the amended version of the guidelines took effect.
The amendment:
- relaxes the requirement for the disclosure of specifications and drawings;
- clearly stipulates that an architectural design and an interior design can be subject matter for a design patent;
- relaxes the requirement relating to design divisional applications; and
- amends the stipulation relating to graphical designs and others.
This article focuses on the relaxing of the requirement for the disclosure of specifications and drawings and design divisional applications and provides a comparison between the amended guidelines and the previous version.
Relaxing requirement for disclosure of specifications and drawings
Paragraphs 1 and 2 of Article 53 of the current Enforcement Rules of the Patent Act stipulate that:
[i]n a patent application for design, the drawing(s) shall contain sufficient views so as to fully disclose the appearance of the claimed design; where the design is three-dimensional, the drawing(s) shall contain a perspective view; where the design is applied to a boundless plane in form, the drawing(s) shall contain an element view. The views stated in the preceding paragraph may include a perspective view, a front view, a rear view, a left side view, a right side view, a top view, a bottom view, a plan view, an element view, or other auxiliary views.
The previous Patent Examination Guidelines (page 3-1-9) stipulated that 'sufficient drawings' indicates that drawings will disclose each view of a design in a sufficient manner, such that the appearance of the entire claimed design can be fully disclosed. Accordingly, a view can be omitted only for the following reasons, or the drawings would be deemed as having failed to sufficiently disclose the design:
- the view is identical or symmetrical to another view;
- a general customer would pay no attention to such view when purchasing or using the object or the view is completely planar and contains no design features;
- the object is extremely thin such that a general customer would pay no attention to such a view when purchasing or using the object; or
- the view is a simple cross-section and contains no design features.
The amendment to the guidelines is based on the concept of partial design. In principle, the content of an omitted view will be deemed a 'disclaimed portion' and the claimed design will accordingly belong to a partial design. Nevertheless, if a view is identical or symmetrical to another view or omitted due to extreme thinness of the object, a description is still required in the specification.
Even if a design is deemed a partial design, the views of the drawings are required to disclose all of the 'claimed portion' in a sufficient manner. If the drawings are insufficient to disclose the appearance of the claimed portion or define the scope of the claimed design, a person skilled in the art would be unable to understand the claimed design from the limited drawings. In such case, the application would be deemed to violate the 'enablement' requirement.
Relaxing the requirement relating to design divisional applications
According to the previous Patent Examination Guidelines, if drawings initially filed disclose only one appearance applying to one article and contain no other reference views or state-of-use views, a divisional application cannot be filed for the disclaimed portions since the drawings do not clearly disclose substantially two or more designs.
In order for the divisional application requirement to conform with that for effecting an amendment and that for effecting a conversion (eg, converting a design application to a derivative design application or vice versa (ie, "whether an amendment/a conversion goes beyond the scope of the specification and drawings initially filed")), the amendment stipulates that if the content disclosed in the specification or drawings initially filed may substantially be two or more designs, the applicant may file a divisional application for one or more designs (eg, the design clearly disclosed in the reference views of the drawings or a component or content with a different scope clearly disclosed in the drawings) disclosed in the specification or drawings initially filed, thereby pursuing another or more other applications.
According to the new guidelines, applicants may file a divisional application during pendency of the parent application by changing a part of the solid lines in the drawings initially filed to broken lines or vice versa. However, the divisional application must still comply with not going "beyond the scope of the specification or drawings as initially filed" as required.
Accordingly, the amended guidelines provide applicants with a more flexible filing strategy and a more complete level of protection with regard to the appearance of their designs.
