Chapter IV
Design Patent
Article 121 Definition of design
"Design" means the creation made in respect of the shape, pattern, color, or
any combination thereof, of an article as a whole or in part by visual appeal.
For computer generated icons (Icons) and graphic user interface (GUI)
applied to an article, an application may also be filed pursuant to this Act
for obtaining a design patent.
Article 122 Substantial conditions
A design which is industrially applicable may be granted a design patent
upon application in accordance with this Act, provided any of the following
does not exist:
1. an identical design or a similar design was disclosed in a publication
prior
to the
filing of the patent application;
2. an identical design or a similar design was publicly exploited prior to the
filing of the
patent application;
3. a design was publicly known prior to the filing of the patent application.
Where a design can be easily conceived by a person ordinarily skilled in the
art of the design based on prior art, a design patent shall not be granted for
such a design notwithstanding
the preceding paragraph.
Any of the following events shall not be deemed as one prescribed in
Paragraph 1 or the preceding paragraph, which may preclude the granting
of a design patent, provided that the concerned design patent application is
filed within
six months from the date of the
event's occurrence:
1. the
design was disclosed in a publication;
2. the design was displayed at an exhibition held or recognized by the
government;
3. the
design was disclosed without the consent of the applicant.
An applicant claiming exemption as set forth in Subparagraph 1 and
Subparagraph 2 of the preceding paragraph shall state the fact and the
relevant date in the patent application at the time of filing and submit
evidentiary documents within the time limit specified by the Specific
Patent Agency.
Where a design claimed in a design patent application is identical or similar
to a design disclosed in the description or drawings of an earlier-filed
design patent application which is laid open or published after the filing
of the later-filed design patent application, a design patent shall not be
granted to such design; however, this shall not apply where the applicant
of the later-filed design patent application is the same as the applicant of
the earlier-filed design patent application.
Article 124 Statutory exclusion
A design patent shall not be granted in respect of any of the following:
1. a shape of
an article, which is solely dictated by its function;
2. an
artistic work;
3. the layout
of an integrated circuit and electronic circuits;
4. an article contrary to public order or morality.
An application for a design patent shall be filed with the Specific Patent
Agency by the person entitled to applying for patent by submitting a request,
a description and drawings.
The filing date of a design patent application shall be the day on which the
request, description
and drawings are submitted in full.
Where an applicant does not submit a description and drawings in Chinese
at the time of filing, but in a foreign language, and where the Chinese
translation for the said documents is submitted within the time limit
specified by the Specific Patent Agency, the filing date shall be the date
on which the foreign language version was originally submitted.
Where the Chinese translation is not submitted within the specified time
limit as stated in the preceding paragraph, the design patent application
shall be dismissed; however, if the Chinese translation is filed prior to the
dismissal decision is received, the date on which the Chinese translation is
filed shall be regarded as the filing date, and the foreign language version
shall be deemed not having been submitted.
A description and drawings shall disclose the design in a manner clear and
sufficient for it to be understood and carried out by a person ordinarily
skilled in the art of the design.
Manner of disclosure for description and drawings shall be prescribed in
the Enforcement Rules of the Patent Act.
For two or more similar designs owned by the same person, applications
may be filed for a
design patent and its derivative design patents.
The filing date of a derivative design patent application shall not be earlier
than the filing date of the original design patent application.
An application for derivative design patent filed after the publication of the
original design patent is not
acceptable.
A design owned by the same person cannot file a derivative design patent
which is similar only to another derivative design but not to the original
design.
Article 128 Principle of first-to-file
Where two or more design patent applications are filed for the same or
similar design(s), only the first-filed application can be granted. The above
shall not apply if the priority date claimed for the later-filed application is
earlier than the filing date of the earlier application.
Where the filing date and the priority date referred to in the preceding
paragraph are the same, the applicants shall be notified to reach an
agreement with respect to the matter concerned. If such an agreement cannot
be reached, none of the applications shall be granted. If the said design patent
applications are filed by the same applicant, the applicant shall be notified
to select one design patent application within a time limit; failure to make a
selection within the time limit shall result in rejection of all such design
patent applications.
While the applicants concerned are in progress of reaching an agreement,
the Specific Patent Agency shall require these applicants to report the results
of the negotiation within an appropriate time limit. If said report is not
submitted within the specified time limit, it shall be deemed that the
agreement is not reached.
The above three paragraphs shall not apply to any of the
following:
1.
the applications for the original design and its derivative design(s);
2. the applications for two or more derivative designs originated from the
same original
design.
Article 129 Unity; design for a set of articles
An application for a design patent shall relate to one design.
Two or more articles belonging to the same class and are customarily sold
or used together may be filed as for one design.
An application for a design patent shall indicate the article to which the
design is applied.
Article
130
Division of application
For a design patent application which substantially contains two or more
designs, said design patent application may, upon notice by the Specific
Patent Agency or upon request by the applicant, be divided into two or
more divisional
applications.
A divisional application shall be filed before a reexamination decision on
the original application
is rendered.
For a divisional patent application, the examination thereof shall be
continued from the examination procedure of the original patent
application.
Article
131 Conversion between design
patent and derivative design patent
When a design patent application is converted into a derivative design
patent application or where a derivative design patent application is
converted into a design patent application, the filing date of the converted
design patent application shall be deemed to have the filing date of the
original design patent application.
A converted design patent application shall not be filed under any of the
following circumstances:
1. after a written decision granting the original application is served;
2. after two months from the date on which a written decision rejecting the
original
application is served.
A converted design patent application or a derivative design patent
application shall not extend beyond the scope of disclosure in the
description and/or drawings of the original application as filed.
Where an application originally filed for invention or utility model patent is
converted into a design patent application, the filing date of the converted
design patent application shall be deemed to have the filing date of the
original application.
A converted application shall not be made under any of the following
conditions:
1. where a written decision granting the original patent application is served;
2. after two months from the date on which a written decision rejecting the
original
invention patent application is served;
3. after thirty days from the date on which a written decision rejecting the
original utility
model patent application is served.
A converted patent application shall not extend beyond the scope disclosed
in the description, claims, or drawings of the original patent application as
filed.
Article
133 Foreign language documents
Where a patent applicant submits a description and drawings prepared in a
foreign language under Paragraph 3 of Article 125, such foreign language
documents shall not be amended.
The Chinese translation submitted under Paragraph 3 of Article 125, shall
not extend beyond the scope of content of the original foreign language
documents as filed.
When a design patent application is in violation of any of the provisions set
forth in Articles 121 to 124, Article 126, Article 127, Paragraphs 1 to 3 of Article
128, Paragraphs 1 and 2 of Article 129, Paragraph 3 of Article 131, Paragraph
3 of Article 132, Paragraph 2 of Article 133, Paragraph 4 of Article 34
applicable mutatis mutandis under Paragraph 1 of Article 142, Paragraph 2 of
Article 43 applicable mutatis mutandis under Paragraph 1 of Article 142, and
Paragraph 3 of Article 44 applicable mutatis mutandis under Paragraph 1 of
Article 142 of this Act, a rejection decision shall be rendered.
The term of a design patent shall expire after a period of twelve years from
the filing date of the application. A derivative design patent, shall expire
simultaneously with the original
design patent.
Unless otherwise provided in this Act, the patentee of a design patent has the
exclusive right to prevent others from exploiting the design or similar
design(s)
without the patentee’s consent.
The extent of the protection conferred by a design patent shall be determined
by the drawings, and the description may be considered as a reference.
The derivative design patent right can be claimed independently, and its
effect shall be extended to the scope of similarity.
Article 138 Disposal of derivative design patent
A derivative design patent right shall be assigned, entrusted, inherited,
licensed or pledged together with its original design patent.
Where the original design patent right has become extinguished or has
been invalidated in accordance with Subparagraph 3 or 4, Paragraph 1 of
Article 70 applicable mutatis mutandis under Paragraph 1, Article 142, and
where there are two or more derivative design patents still in force, the
derivative design patents shall not be separately assigned, entrusted,
licensed, or pledged.
When applying for amending the description or drawings of a design patent,
the patentee
shall only conduct the amendment as follows :
1. to correct
erroneous disclosure or incorrect translations;
2. to clarify ambiguous statement.
Except for correction of incorrect translations, an amendment shall not extend
beyond the scope of content of the description or drawings as filed.
For a design patent application filed by submitting the description and
drawings prepared in a foreign language pursuant to Paragraph 3 of Article
125, a correction of incorrect translations shall not be beyond the scope of
content of the foreign language documents as filed.
An amendment shall not substantially enlarge or alter the scope of drawings
as published.
A design patentee shall not abandon his/her own design patent right
without consent of the licensee(s) or pledgee(s).
Any person may request for invalidation against a design patent with the
Specific Patent Agency
under any of the following circumstances:
1. where there is a violation of any of the provisions set forth in Articles
121 to 124, Article 126, Article 127, Paragraphs 1 to 3 of Article 128,
Paragraph 3 of Article 131, Paragraph 3 of Article 132, Paragraph 2 of
Article 133, Paragraphs 2 to 4 of Article 139, Paragraph 4 of Article 34
applicable mutatis mutandis under Paragraph 1, Article 142, Paragraph 2
of Article 43 applicable mutatis mutandis under Paragraph 1, Article 142 and
Paragraph 3 of Article 44 applicable mutatis mutandis under Paragraph 1,
Article
142 of this Act;
2.where the home country of the patentee does not accept patent applications
filed by
nationals of the ROC;
3. where there is a violation of Paragraph 1 of Article 12 of this Act or where
the design patentee concerned is not entitled to file the design patent
application.
An invalidation request based on Subparagraph 3 of the preceding paragraph
shall only be
filed by the interested party.
With respect to ground(s) of an invalidation request against a design patent,
the provisions in effect at the time of said patent approved shall govern.
However, if an invalidation request is filed based on the ground(s) under
Paragraph 3 of Article 131, Paragraph 3 of Article 132, Paragraphs 2 and 4 of
Article 139, Paragraph 4 of Article 34 applicable mutatis mutandis under
Paragraph 1, Article 142, or Paragraph 2 of Article 43 applicable mutatis
mutandis under Paragraph 1, Article 142 of this Act, such invalidation
action shall be governed by the provisions in effect at the time of filing
said request.
The provisions of Article 28, Article 29, Paragraphs 3 and 4 of Article 34,
Article 35, Article 36, Article 42, Paragraphs 1 to 3 of Article 43, Paragraph 3
of Article 44, Article 45, Paragraph 2 of Article 46, Article 47, Article 48,
Article 50, Paragraphs 1, 2 and 4 of Article 52, Paragraph 2 of Article 58,
Article 59, Articles 62 to 65, Article 68, Article 70, Article 72, Paragraphs
1, 3 and 4 of Article 73, Articles 74 to 78, Paragraph 1 of Article 79, Articles
80 to 82 Articles 84 to 86, Articles 92 to 98, Articles 100 to 103, of this Act
shall apply
mutatis mutandis to
design patents.
In the case of design patent applications, the time period specified in
Paragraph 1 of Article
28 shall be six
months.
In the case of design patent applications, the time period specified in
Paragraphs 2 and 4 of Article 29 shall be ten months.