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Amendment to Taiwan’s “Design Patent Substantive Examination”

July 13, 2021

The Taiwan Intellectual Property Office (TIPO) in Taiwan announced an amendment to “Volume 3–Design Patent Substantive Examination” of the Patent Examination Guidelines (hereinafter referred to as “Guidelines”) on 29 September 2020. The amended Guidelines took effect on 1 November 2020. The main key points of the revision are as follows:

1. A specific section, “Description of Design Section”, is added: applicant uses this specific section to describe the relevant drawing wherein applicant may stipulate the disclosure of the colors. Applicant may specify in this Description of Design:” The subject design is represented by black-and white photos (computer generated drawing in grayscale”. The tone shown in the drawings only helps to show the contour of the subject design, but the subject design does not claim the colors of black, white, or gray as shown in the drawing”.

2. A revision on the Description of Design Section for “graphic Design”: The amended guidelines requires that the shape of an subject is simply dependent on the basic shape of a “must fit” portion of a conventional subject. The design as a whole is related to the outcome for connection or matching the conventional subject but should be in a creative concept.

3. Instruction an examples on Description of Design Section for “Spacing design” – should include the building way and the inferior design”. The Amended Guideline specified that when the claimed Design is differed from the prior art while changing a single color from a conventional color system, the application in the design should be deemed as lacking influence on the visual impression of the design. In principle, the design should be similar to the prior art. When the design with more colors, the combination of these colors is easy to form, and the combination of these colors contrives as a unique visual effect. When the combination of colors doesn’t not form a unique visual effect, this combination is deemed easily to conceive.

This amended Guidelines provides more flexible filing strategies, and applicant will have more possibilities to have a complete protection for the appearance of their design.