Taiwan: Originality test for designs clarified

In Taiwan, a design must be "original" to be patentable. Since a design that simulates a known object is not original as required by the Patent Law, a "test for originality" will be applied in determining the patentability of a design over a piece of prior art. According to the Examination Guidelines published by Taiwan's IP Office, to determine whether two designs are similar, the designs shall be viewed from the naked eyes of ordinary consumers without the aid of any instrument. Moreover, as a design patent in Taiwan protects only the visually appreciable appearance of an article of manufacture, the mechanical function and construction of the article, as well as the operation processes involved in the use of the article are all excluded from design patent protection.

In connection with a design application entitled "Component for a Portable Display Device", Taiwan's IP Office issued a final office action to deny the patentability of the claimed component by citing a piece of prior art. The IP Office made the following findings: (1) there is no obvious visual difference between the claimed component and the cited art in terms of the front-side portion; and (2) the back-side portion of the claimed component is visually dissimilar to that of the cited art.

However, the feature residing in the back-side portion is merely dictated by function and the back-side portion of the component installed in the internal structure of a display device is not visually appreciable by end users of the display device after assembly. Thus, the claimed component cannot establish patentability over the cited art. The Board of Appeals adhered to the opinion of the IP Office after examining the appeal filed by the applicant.

The applicant then pursued administration litigation at the IP Court. The IP Court thought differently and remanded the case to the IP Office for reconsideration. The IP Court held that the feature residing in the back-side portion of the claimed component is not merely functional. Instead, it is attributable to the eye-appealing aesthetic effect achieved by the claimed component. Moreover, as the components in question can be purchased or traded on their own, so-called ordinary consumers should not be limited to the consuming public or users of the end product. They may include intermediate manufacturers, contractors or professional repairers who have easy access to the outer appearance of the components in question when making bulk purchases. On that account, the ornamental feature residing in the back-portion of the component shall be taken into account in the test for originality even if it is not visually appreciable by end users of the display device.

This case suggests that "ordinary consumers" referred to in Taiwan's Examination Guidelines are not limited to end users and that an ornamental feature residing in a functional component installed in the inner structure of an article may still be considered in the test for originality of a design applied to the component.

Ming-yeh Lin

Saint Island International Patent & Law Offices7th Floor, No. 248, Section 3Nanking East RoadTaipei 105-45, Taiwan, ROCTel: +886 2 2775 1823Fax: +886 2 2731 6377siiplo@mail.saint-island.com.twwww.saint-island.com.tw