According to Article 125, Paragraphs 1 and 2 of the Patent Act, the required documents for filing for a design patent application are a filled application form, a specification, and drawings. The filing date of a design patent application will be granted as the date on which all of the required documents are submitted. In the meanwhile, pursuant to Rule 50 of the Enforcement Rules of the Patent Act, a qualified specification of a design patent application shall contain: (1) a title of design, (2) the usage of the design, and (3) a description of the design. However, the usage and description may be omitted if the title and drawings have clearly expressed the design. As such, the specification of a design patent application should at least record the title of design; failing to record the title may result in the lost of the original filing date and even the priority date claimed. Such rule is also applied to design patent applications filed in a foreign language.
Such defects are commonly found when a design application is filed based on an application first filed in a foreign jurisdiction since the title of design may not be essential in interpreting the scope of the design nor securing a filing date in such foreign jurisdiction. Accordingly, applicants who would like to file a design application based on text in a foreign language must be particularly alert for the following:
- If a design application is filed based on text in a foreign language, the title of design shall be disclosed in the foreign text as filed. If the title of design is absent from the foreign text as filed, a supplement to the foreign text showing the title of design is required to overcome the formality defect; however, the filing date of the design application will be deferred to the date the title of design is submitted.
- If the title of design is absent from the foreign text as filed, it is not acceptable to designate a title of design by referring to the title as listed in the application form or in the certified priority document.
- If the title and the description of the design is completely absent from the foreign text as filed, it is not acceptable to supplement the title of design by asserting that such information can be found in the certified priority document so as to maintain the original filing date. Under this scenario, no supplement to the foreign text will be allowed.
- If the filing date of a design application is deferred to the date the title of design is submitted, and as a consequence the 6-month time frame for priority claim has lapsed, the priority claim shall be dismissed.