background image
Introduction of the Design Patent Amendments
in the New Taiwan Patent Act
Chi-Che Tung has extensive experience in patent prosecution,
patent search, infringement analysis, invalidation and litigation in
many technical fields. These technical fields include mechanical,
electromechanical, electrical, software, communication, construction
and civil engineering. In addition to Taiwan, he also specializes in
patent prosecution in China, the United States, Japan and Europe.
Formosan Brothers
8F, No. 376 Section 4,
Jen-Ai Road
Taipei, Taiwan 10693
+886 2 2705 8086 Phone
+886 2 2701 4705 Fax
Chi-Che Tung
The new Patent Act came into effect
on January 1, 2013. In the new Patent
Act, other than the amendments to the
original provisions, related provisions re-
garding "partial design," "icon design,"
"group design" and "derivative design"
were also added according to interna-
tional practices and industry develop-
ment trends.
The original provisions stipulated
that protected new design patents have to
be the "overall design" of the entire ap-
pearance of the object. However, to avoid
competitors in the market plagiarizing
parts of the novelty features of prod-
ucts and easily avoiding the protection
of design patents, the amended Patent
Act stipulates that the applicant may
file a design patent application for the
"partial design" of partial components of
an object like car lights, or parts of the
features for the appearance of an object
like the exterior patterns on sneakers.
When filing an "overall design" pat-
ent application, the overall appearance of
the drawing of the object in the specifica-
tion must be outlined with ink lines. But
when filing a patent application based on
"partial design" of the object, the object
to which the partial design applies must
be stated in the specification. In addi-
tion, "the parts in the drawing which the
design intends to claim" and "the parts
in the drawing which the design does not
claim" must be presented in a man-
ner whereby the different parts can be
clearly distinguished. For example, the
appearance of "the parts in the drawing
which the design intends to claim" of the
patent application shall be specifically
and realistically shown in solid lines,
and "the parts in the drawing which the
design does not claim" shall be shown in
dotted lines or colored in grey or shown
in a translucent manner to clearly distin-
guish "the parts in the drawing which the
design intends to claim" from "the parts
in the drawing which the design does not
Computer Generated Icons ("CGI")
like ones used for click-to-action func-
tions and Graphical User Interface
("GUI") like function menus refer to
types of drawings that are shown on
display panels and monitors and only
exist temporarily, and that cannot be
constantly shown on objects like patterns
or colors on wrapping paper or cloths.
CGI includes application icons that
are used for click-to-action functions
shown on the monitors of computer or
electronic devices. GUI includes pull
down function menus or function menus
in different forms. However, with the
amendment of the Patent Act, it has been
determined that the "icon design" of CGI
and GUI used for objects are also a type
of creation used for the appearance of the
object, and thus it may also be subject to
the protection of design patents.
When filing an "icon design" patent
application, since icon designs have
to be shown through monitors, display
devices or various kinds of display
panels, thus the object that shows the
icon design has to be designated. The
drawings of the CGI and GUI cannot be
filed alone. Furthermore, other than still
"icon designs," icon designs that change
in appearance like video game charac-
ters that transform or user interfaces that
change through click-to-action functions
Asia Pacific