The Taiwan Patent Act stipulates that "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 appeal1. An industrially applicable design that has not been disclosed in a printed publication, publicly exploited or known to the public and cannot be easily conceived by a person having ordinary skill in the art before the application was filed may be granted a design patent2. That is to say, a design shall be industrially applicable, novel and creative with respect to prior art designs. This article analyzes a recent judgment by the Intellectual Property and Commercial Court (IPC Court) to provide strategies for applicants of a design patent applications or patentees of a design patents when facing an obviousness rejection.
On March 30, 2022, the IPC Court rendered the Xing Juan Hsu Zi No. 42 administrative judgment3, in which an issue with respect to the creativeness of a design patent was discussed. The design patent application in question was filed on August 10, 2016 and was granted and published by the Taiwan Intellectual Property Office (TIPO) on January 18, 2017. An intervening party filed an invalidation action against the patent at issue on the ground that the claimed design does not fulfill the requirement of Paragraph II of Article 122 of the Patent Act in view of Taiwan Design Patent No. D190010. The invalidation action was reviewed and examined by the defendant (the TIPO), and the TIPO rendered a decision on February 26, 2019 to reject the petition. The plaintiff (the petitioner of the invalidation action) was dissatisfied and filed an appeal with the Ministry of Economic Affairs which decided to reject the appeal on July 12, 2021. The plaintiff was again dissatisfied with the appeal decision and filed an administrative lawsuit with the IPC Court. After examination, the IPC Court decided to reverse the appeal decision.
The claimed design of the patent at issue and the disclosures in Evidence item 2 both are directed to a lamp holder. The views of the lamp holder of the patent at issue and the Evidence item 2 are reproduced below.
Perspective view and top view of the lamp holder of the patent at issue
Perspective view and top view of the lamp holder of Evidence item 2
According to the Patent Examination Guidelines, when the design claimed in a design patent application is deemed to be novel, the patent examiner shall further examine whether a person having ordinary skill in the art can easily conceive the claimed design. When a person having ordinary skill in the art is able to complete the claimed design by imitating, transforming, replacing, or combining any other design(s) based on the prior art, and the claimed design does not produce any distinguishable visual effects, the claimed design shall be considered not creative4.
The examination of creativeness shall be based on the overall appearance of the design to be assessed. If a person having ordinary skill in the art considers that the design is easily conceived based on the prior art and general knowledge at the time of filing the application, the design is determined to be not creative. Generally, whether a claimed design is creative, generally, the examination may be rendered by following the steps below:
Step 1: Determining the scope of the claimed design;
Step 2: Determining the content disclosed in the prior art;
Step 3: Determining the skill level of a person having ordinary skill in the art;
Step 4: Confirming the differences between the claimed design and prior art;
Step 5: Determining whether the differences between the claimed design and the prior art are sufficient to accomplish the claimed design based on the general knowledge in the art at the time of filing the design patent application5.
As can be seen from the figure, the lamp holder is equipped with a multi-layered base body, and the uppermost layer of the base body has a continuous curved arc shape, which looks like four petals; the front end of each petal is shaped to be further extended, and a metal pin for discharge is provided at the front end to form the overall design.
The TIPO’s observations of the claimed design and the disclosures in Evidence item 2 follow:
The design of the patent at issue:
The four petal-shaped convex bodies of the patent at issue have a "square" shape; the middle circular disk and the upper four petal-shaped convex bodies have different diameters. The height-to-width ratio of the "square" shape is 1:1; the height-to-diameter ratios of the upper and lower layers are consistent.
The disclosure in Evidence item 2:
The four petal-shaped convex bodies are in a "rectangular" shape, and the height-to diameter ratios of the upper and middle layers are different. The obvious differences in the reinforced layer segments form an "I-shaped inner portion" between the entire base body and the cylindrical tube body, thereby forming a “concave ring groove"; this difference is not a simple modification resulting from "ignoring the step-wise structure" or "deleting one layer" to accomplish the overall appearance of the design of the patent at issue. The disclosures in Evidence item 2 are insufficient to establish obviousness of the patent at issue.
However, the IPC Court disagreed with the TIPO and first pointed out that Evidence item 2 disclosed the same article as the patent at issue, and then proceeded to compare the appearances of the designs disclosed in the patent at issue and Evidence item 2. In the comparison, the IPC Court found that Evidence item 2 has disclosed the claimed lamp head equipped with a multi-layered base body, the uppermost layer of the base body having a continuously curved arc shape, shaped like four petals, and a metal pin for discharge extends from the front end of each petal shape. Although a difference exists between the claimed design and the disclosures of Evidence item 2, i.e., the joint between the base of Evidence item 2 and the lamp head is slightly retracted, such difference does not substantially affect the overall appearance of the lamp head. Consequently, the IPC Court determined that this difference could be easily accomplished by simply modifying the base of Evidence item 2 into a retracted layer, and the difference between "square" and "rectangular" shapes in the four petal-shaped convex bodies merely belongs to a geometric design of "rectangular" arrangement. Such difference can be achieved by merely changing the proportion, position or number of elements in the petal design in the prior art. The claimed design is a creation using known techniques and cannot produce a unique visual effect on the overall appearance of the design. Evidence item 2 has indeed disclosed the design features of the patent at issue, and as a result the patent at issue was deemed not creative. Consequently, the IPC Court determined that the disclosure of Evidence item 2 is sufficient to establish obviousness of the design of the patent at issue.
The IPC Court’s judgment takes a different approach in assessing the creativeness of the patent at issue. Comparing the assessments made by the IPC Court and the TIPO, the following differences can be found:
(1) The focus is on features that attract the attention of ordinary consumers and are sufficient to affect the judgment of the creativeness of the design patent. When comparing the design for a patent application with the prior art, the overall appearances of the designs should be considered, and the features that are notable to consumers play an important role. The TIPO emphasized that based on Evidence item 2 "the height-to-diameter” ratios of the upper and middle bases are different from the design in the patent at issue. However, when reviewing the design of the patent at issue, while the appearance of the design of the patent at issue should be considered to be easily conceived, the key feature that consumers will notice is the "four petal-like convex bodies," which may be combined with other parts to establish the unique visual effect of the overall appearance of the claimed design. The key features of the design of the patent at issue selected by the TIPO and Evidence item 2 are inconsistent with the features selected by the IPC Court. Namely, the scopes of the designs of the patent at issue and Evidence item 2 confirmed by the IPC Court and the TIPO are different, and the comparisons and the results the IPC Court and the TIPO are certainly different from each other.
(2) Partial different features may affect the visual effect of the overall appearance and thus the judgment on the creativeness of a claimed design. Comparison based on overall appearance should be used to determine whether different design features are easily conceived, and a new design element may produce a significant visual effect on the overall appearance. In this case, Evidence item 2 was cited as prior art changing the length, width, spacing, and proportion of the shape of the design of the patent at issue to form an "I-shaped concave ring groove" between the entire base body and the cylindrical tube body. Such difference is not conceived by "ignoring the step-wise structure" or "deleting one layer" and is merely a simple modification. The IPC Court ruled that although the length, width, spacing, proportion, etc. of the design are adjusted, if the adjustment does not produce a significant visual effect on the overall appearance of the design, the design should be deemed obvious. However, as to whether differences are sufficient to "affect the overall visual effect," care should be taken to avoid relying only on partial differences when determining creativeness. The visual effect should be considered as a whole to determine whether the overall difference is sufficient to produce a significant visual effect.
When judging the difference between the design at issue and the prior art, the comparison should be based on the overall appearance of the design, rather than being made in view of partial features, i.e., the comparison should be a comprehensive "overall comparison." However, it is crucial that the comparison is based on prominent individual design features, namely features that may easily attract the attention of ordinary consumers. Further, whether features are functional or decorative and the number of different features for comparison should also be considered. If most of the features are decorative, and the options available for design changes are limited (the design field in the relevant art is relatively saturated), the impact of minor features on the overall appearance, and consequently on the evaluation of creativeness, is comparatively high. This "comprehensive judgment" is the basis for judging patentability of a design and must be rigorously applied to ensure accurate comparison.
In view of the foregoing, when applicants of design patent applications or patentees of a designs face obviousness challenges, to establish the creativeness of a claimed design, applicants or patentees may ensure that proper partial features of the claimed design are chosen for comparison. It is also essential to stress the impact of these features on the overall appearance of the claimed design in view of the prior art. Putting it differently, the assessment of the creativeness of a claimed design should follow the rules of "overall comparison" and "comprehensive judgment."
*Patent Attorney, Assistant Manager of International Patent Division at Tai E International Patent & Law Office
1 Paragraph I of Article 121 of the Patent Act.
2 Article 122 of the Patent Act.
3 The Intellectual Property and Commercial Court 2021 Xing Juan Hsu Zi No. 42 administrative judgment.
4 Page 3-3-15 of Chapter 3 of Part III of the Patent Examination Guidelines.
5 Pages 3-3-15 and 3-3-16, Section 3.4 of Chapter 3 of Part III of the Patent Examination Guidelines.
