The amended Guidelines of Substantive Examination on Design Patent (“the guidelines”) was released on March 1, 2016 by TIPO, after holding two public hearings  last year.  The new version of the guidelines was put into effect in April 2016. The new amendmentsare intended to facilitate the practical implementation of the guidelines, and among such major changes include: “interpretation of the disclosure of design drawings,” “requirement of title of the design,” and “eligible amendment to design drawings.”  More details are stated as below.

Interpretation of the Disclosure of Design Drawings

Article 136, Paragraph 2 of the Patent Act stipulates that “[t]he extent of the protection conferred by a design patent shall be determined by the drawings, and the description can be considered as a reference.” The design drawings shall disclose the content of the claimed design.  Yet, in some cases, such as a design having color scheme or a design-in-part, where the applicant may use colors to depict the design article in the drawings, the claimed scope of which may be redefined by adding a statement in the description of the design.

According to the present guidelines, if the colors shown on the design are intended to be claimed, the drawings or photographs of the design should represent its color scheme.  However, if the colors shown on the design are not intended to be patented, current practice accepts with exception the filing of color drawings along with the statement “the color shown on the claimed design forms no part of the claimed design” or “the colors of the present application are disclaimed” in the description of the design, so that the colors shown in the drawings will not be interpreted as the claimed scope. Such tolerance of interpretation of the scope of protection in current practice may transcend the text statement in the description over the visual content in the drawings, which seems to deviate from the legislative purposes of the Patent Act.

The amended guidelines arereflective of the statutory requirement as prescribed by  the Patent Act, in that only monotone disclosures, such as ink drawings, computer generated grayscale illustrations, or black-and-white photographs are acceptable for filing a design that excludes colors therefrom.Thus the disclaimers stated in the description will no longer berequired or acceptable.

The amended guidelines hold the principle as to what is disclosed in the drawings is defined or claimed in the design.  Therefore, it will be clear cut in the future that the color drawings or photographs are specified for claiming a design with a color scheme, and the above-listed monotone disclosures are particularly used for filing a design that excludes color.

The only exception rule remains in claiming a design-in-part, where the drawings are permitted to present “the part of the design that is not claimed” by a single color blocking, in the event of infeasibility use of a dotted or broken lines or otherwise, so as to clearly distinguish the unclaimed part from “the part of the design being claimed.”  In this case, the statement for excluding such part from protectionshould still be included in the accompanying description to serve the purpose of a disclaimer.

Requirement of Title of the Design

In accordance with the principle rule regarding the disclosure of design drawings, the amended guidelinesloosen the requirement for the title of a design-in-part.

As long as the parts in the drawings thatare intended to be claimed and those that are not intended to be claimedare presented clearly enough to be distinguished, it is sufficient to identify that the claimed design is a design-in-part.  Therefore, it will no longer be necessary to entitle the design as “portion of … (an article)” when filing a design-in-part application, according to the amended guidelines.

Eligible Amendment to Design Drawings

In the chapter regarding amendments to the disclosure of a design, several examples are addedto demonstrate more specifically on which kind of said amendmentswill be acceptable.  In addition, a more specificdefinition of “the introduction of new matters” is also supplemental content of the amended guidelines.

Before a design patent is granted, the claimed scope can be altered by submitting an amendment to the drawings without introducing new matter to the original disclosure of the design.  The determination of “the introduction of new matters” shall be examined on whether the amendment to the drawings generates different content of appearance.  If the amendment to the drawings is not directly appreciable from the original disclosure, it is deemed as introduction of new matters in this particular amendment.

Based on the amended guidelines, the amendments to the drawings may lead to the modification of the content of appearance and will be deemed as introducing new matter to the original disclosure of the design. Examples are  deletion or addition of certain portions of solid or broken lines, alterations of a portion of the lines between solid lines and broken lines, addition of new boundary lines to the design, or random selection of the compositional elements to be shown in solid lines and broken lines for claiming a design-in-part.

Commentary

In view of the above, the amended guidelines bring substantive changes to the design patent practice, particularly in the disclosure of design drawings.  Applicants should prepare to comply with the new rules when claiming their designs.