Introduction
Disclosure principles of descriptions and drawings
Priority and exceptions to loss of novelty or non-obviousness
On 14 July 2021, the Ministry of Economic Affairs promulgated the updated Patent Examination Guidelines (the guidelines) for Part III (Substantive Examination of Design Patent Applications). The guidelines became effective on the same date.
The following sections were updated:
- Part III, Chapter 1 (description and drawing(s)):
- Disclosure Principles of Descriptions and Drawings;
- Part III, Chapter 5 (priorities):
- Formality Requirements;
- Priority Effects;
- Priority and Exceptions to Loss of Novelty or Non-obviousness; and
- "Dos and Don't"s of Substantive Examination.
This article primarily summarises the changes to the Disclosure Principles of Descriptions and Drawings section and the Priority and Exceptions to Loss of Novelty or Non-obviousness section.
Disclosure principles of descriptions and drawings
Pages 3-1-1 and 3-1-2 of the guidelines previously stated as follows:
General knowledge refers to the knowledge known in the art to which the design pertains, including the information that is known or commonly used and the information documented in textbooks or reference books, or the matters known from rules of thumb. Ordinary skill refers to the general ability to perform design work. General knowledge and ordinary skill at the time of filing is called common knowledge at the time of filing for short in this Chapter. (Emphasis added.)
Pages 3-1-1 and 3-1-2 of the guidelines now state as follows:
General Knowledge refers to the knowledge that is known in the technical field to which the design pertains, including the knowledge that is well-known in a reference book or textbook, and also the information that is commonly used and understood from rules of thumb. Ordinary Skill refers to the general ability to perform design work. General knowledge and ordinary skill is collectively called Common Knowledge for short in this Chapter. Without loss of generality, a person having ordinary skill in the art (PHOSITA) is hypothesized as a single person; however, a group of persons may also be hypothesized as PHOSITA if it is more justified to deem that the PHOSITA consists of a group of persons in consideration of specific facts in the technical field to which the design pertains. (Emphasis added.)
The Taiwan Intellectual Property Office (TIPO) intends this revision to revise the definition of "general knowledge" as shown above. The revision also clarifies that a person having ordinary skill in the art is not limited to a fictitious person, but may be a group of fictitious persons when necessary.
Priority and exceptions to loss of novelty or non-obviousness
Page 3-5-4 of the guidelines previously stated as follows:
where a design claimed in a design patent application is under any of the circumstances of exceptions due to loss of novelty or non-obviousness prior to the filing date, a request may be filed by the design patent applicant within six months after the occurrence of the facts, claiming that the design related to the facts does not form a part of prior art.
This section also previously stated as follows:
the effect of claiming priority is different from that of exceptions to loss of novelty or non-obviousness. The specified time period allowed to claim priority shall be within six months after the filing date on which an applicant has first applied for a design patent in a foreign country. However, if the applicant claims to be under any of the circumstances of exceptions due to loss of novelty or non-obviousness, the specified time period allowed to claim priority shall not to commence retroactively back to the date of exhibition.
Page 3-5-5 of the guidelines now state as follows:
when a design claimed in a design patent application is under any of the circumstances of exceptions due to loss of novelty or non-obviousness prior to the filing date, such a circumstance is considered a disclosure of facts made by or against the applicant's will. If the design patent application is filed within six months after the occurrence of those facts, the design details related to the said occurred facts will not be deemed as a part of prior art according to Section 4 Loss of Novelty or Non-obviousness of Chapter 3.
However, the section also now reads as follows:
the effect of exceptions due to loss of novelty and non-obviousness is different from the effect of priority. The former provision does not deem the design content related to facts of the disclosure laid open within a six-months grace period as prior art in determining whether a design claimed in a patent application for design is novel or non-obvious. That is to say, disclosure date is not the base date for determining the novelty and non-obviousness of a design. Therefore, if other applicants also file the same or similar design(s) during the grace period between the disclosure date and application date when a certain design patent applicant files his design patent application(s), the design patent application(s) filed later shall not be granted because the effect of the grace period cannot exclude the fact that they were filed later than the application(s) filed by others.
Article 122(3) of the existing Patent Act states as follows:
a disclosure made by or against the applicant's will shall not be deemed as one of the circumstances that would preclude the grant of a design patent prescribed in the subparagraphs of Paragraph 1 or the preceding paragraph, provided that the concerned patent application is filed within six (6) months after the date of the disclosure.
The Patent Act has relaxed the grace period for claiming exceptions due to loss of novelty and non-obviousness and such provisions include "facts of a disclosure made by or against the applicant's will". Consequently, the TIPO has added two conditions for claiming a grace period applicable to exceptions due to loss of novelty or non-obviousness to the updated guidelines – namely, that
- the concerned patent application is filed within six months of the date of the disclosure; and
- the disclosure is made against the applicant's will.
For further information on this topic please contact Christian Chi 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.