The Intellectual Property Court rendered the 102-Min-Zhuan-Shang-45 Civil Decision on July 31, 2014 (hereinafter, the "Decision"), which held that when constructing the claims of a design patent, the language of the description for the design shall serve as the basis; an objective determination of novelty may only be made after comparing the design patent with the state of the prior art before the date of the application.
According to the facts of the case, Hong Co., Ltd. is a Japanese company that develops, manufactures and sells coffee equipment products and is the owner of a Taiwan design patent titled "A Coffee Filtering and Brewing Device". Hong asserted that after comparing the glass coffee filtering set manufactured by Hsilong Co. (hereinafter, the "Product at Issue"), they fall within the claims of its design patent and are thus infringing.
The Decision first noted that in interpreting the scope of a patent's claims, the appearance of the drawings is considered in reference to the description in the specifications of the patent. Here, the patent at issue pertains to the appearance of a type of "coffee filtering and brewing device", and the glass filtering cups of the Product at Issue have the same purposes and functions. Therefore, it was determined that the Product at Issue is identical with goods that practice the patent, and it possesses an identical overall visual appearance as well.
The sameness or similarity of an article in its overall visual appearance relative to the claims disclosed in a design patent is insufficient to conclude that such article falls within the patent claims; it is necessary to determine if the article also employs the novel features of the design disclosed in the patent. In determining if the Product at Issue include novel features, the Decision held that "novel features" means the creative content that objectively cause the design patent to possess patentable characteristics such as novelty and inventive step in comparison with the prior art available before the patent application; the novel features must be based on the visual appearance conveyed through the visual feel of the patent rather than any functionality appearances. In addition, it was pointed out in the Decision that when constructing the claims of a design patent, the language of the specification may be relied on as a basis; only after a comparison is made between the design patent and the prior art before the date of the application could there be an objective determination on the novelty of the creative features claimed.
The Decision also notes that the Product at Issue in this matter includes all the features of the patent, and given the identical overall appearance and visual effect, it is sufficient to conclude that the Product at Issue fall within the scope of the claims of the patent. However, the evidence submitted by the defense sufficiently showed that the patent lacks novelty and may be easily conceived of by a person with ordinary skill in the art based on the prior art available, there are grounds for invalidating the patent, thus Hong Co., Ltd. cannot assert any rights against the defendant and its claims lack basis in law.