Andy Hsieh December 19 2022 TIPO's views on design patents for metaverse-associated creations Lee and Li Attorneys at Law | Intellectual Property - Taiwan Andy Hsieh Intellectual Property Are metaverse-related creations eligible for design patent protection?Filing and examination of metaverse design patent applicationsPatent rights for metaverse designsCommentThe rising interest in technologies relating to the metaverse has provoked discussion over how to protect associated inventions and designs through patents. On 14 June 2022, the Taiwan Intellectual Property Office (TIPO) published an article entitled "Relationship between Metaverse and Design Patents", which may serve as a reference for the metaverse industry to improve patent portfolios for the protection of creative achievements. This article sets out the TIPO's views in this regard.Are metaverse-related creations eligible for design patent protection?The metaverse comprises hardware devices (eg, virtual reality (VR) glasses) and virtual digital designs (eg, images presented through VR glasses). The 2011 amendment to the Patent Act added graphic image designs to the scope of design patents. Further, the 2020 amendment to the Guidelines for Patent Examination enabled applicants to extend articles embodying a graphic image design to cover computer program products.Under the current Patent Act and patent practice in Taiwan, metaverse creators can file design patent applications for designs of virtual images as well as for the appearance of hardware devices embodying them.Filing and examination of metaverse design patent applicationsMetaverse virtual images generally include:virtual spaces, designs of which may be presented according to the drawing method of interior design patents;virtual articles, designs of which may be presented according to the drawing method of design patent applications for articles; orhuman-machine interfaces, designs of which may be presented according to the drawing method of graphical user interfaces in graphic image designs.Since metaverse designs for virtual spaces and virtual articles are within the realm of virtual image designs, applicants must designate articles embodying the designs as computer program products, rather than physical articles.Regulations covering the examination of metaverse designs are stipulated in the Patent Act and the Guidelines for Patent Examination. During the examination of creativeness of a virtual image design, the applicant may come across the situation where the TIPO cites references that disclose identical or similar appearances of physical articles as prior art to negate the creativeness of the virtual image design on the ground that the claimed virtual image design adopts the appearance of the physical article.Patent rights for metaverse designsThe following criteria should be met to establish design patent infringement:The accused product is the same as or similar to the article to which the design is applied.The appearance of the accused product is the same as or similar to that of the design patent.According to the 2016 edition of the Evaluation of Patent Infringement Guidelines, the general consumer should be considered when determining whether articles and the appearances thereof are the same or similar. This is also the case for determining whether a design patent application has novelty.As physical articles and computer program products are neither the same nor similar, a design for a physical article cannot be eligible prior art to negate the novelty of a patent application claiming identical or similar designs and directed to computer program products. Similarly, when filing a design application for the appearance of a physical article, the applicant should note that the patent right of the design application, once granted, cannot extend to computer program products that have the same or a similar appearance to the physical article.Accordingly, if an applicant wants to prevent a third party from applying for a design that is identical or similar to its physical article for computer program products, it should file an additional design application for a graphic image design with the same design and designate it as a computer program product, thereby obtaining complete design protection.CommentIn addition to filing design patent applications for designs of physical articles to prevent exploitation by third parties, designers of physical articles should also consider the risk of plagiarism by producers or sellers of virtual graphic images (eg, non-fungible tokens). Thus, when filing a design patent application for a physical article, it may be prudent to simultaneously file a graphic image design patent application designated as a computer program product. This allows a designer to obtain design patent protection for both physical and virtual designs.For further information on this topic please contact Andy Hsieh at Lee and Li Attorneys at Law by telephone (+886 2 2763 8000) or email ([email protected]). The Lee and Li Attorneys at Law website can be accessed at www.leeandli.com.