According to the Design Patent Infringement Assessment Guidelines of the R.O.C. (“the Guidelines”), the steps for determining whether a product infringes a design patent are as follows:
- Interpreting the claim scope;
- Comparing the interpreted claim with the accused product to determine whether the product is visually identical or similar to the design; and
- Judging whether the accused product has the novel features of the design.
In addition, pursuant to the Guidelines and a recent court judgment (see Intellectual Property Court Judgment No. 102-Year-Min-Zhuan-Shang-55), a finding that the accused product is visually identical or similar with the interpreted claim scope of the design patent is not sufficient to determine that the product falls within the claim scope; it is necessary to further determine whether the product embodies the “novel features” of the design. As to what constitute the novel features of a design patent, the Intellectual Property Court points out in the aforementioned Judgment No. 102-Year-Min-Zhuan-Shang-55 that the "written description" in the specification given for the design features shown in the drawings serves as the main basis for determination of "novel features." The court concludes in the judgment that the appearance of the product accused for patent infringement not only has such novel features, but is also sufficient to cause consumers to confuse it with the claimed design, so the accused product falls within the claim scope of the design patent. In other words, the more detailed the "written description" of the design features is, the more likely the scope of the design patent will be interpreted as a narrower one containing all the limitations/features mentioned in the "written description," in comparison with that of a design described in less detail.
Intellectual Property Court Judgment No. 103-Year-Min-Su-Zi-73 further points out the following: "Novel features of a design are those that objectively make the design novel and creative over prior art and thus meet the novelty and creativeness requirements for patentability; such features must relate to visual appeal, and not functionality. … When interpreting the claim scope of a design, one should first take the textual content of the patent specification as the basis, and then compare the design and the prior art in order to objectively determine what the novel features which are significant for the creativeness of the design are." Given the above, relevant prior art references listed in the corresponding patent information in the patent gazette can certainly serve as the basis for "comparison of the asserted design patent with prior art." According to this judgment, in addition to the design features described "in writing" in the specification of a design patent, the differences between such design and known "prior art" (in particular, the references cited by the patent office during the examination procedure) should also be taken into consideration in determining the "novel features" of that design. Furthermore, even if an accused product possesses all the features described in writing in a design patent specification, if it does not possess the novel features which are determined as explained above, it will still not be deemed to infringe the asserted design patent.