Determining claim scope of Taiwan design patents

In Taiwan, a design patent can be obtained rather quickly (generally speaking, the patent office takes three to 12 months to substantively examine a design patent application) and almost all kinds of designs applied to articles are acceptable subject matter of design patents (such as a partial or whole appearance of an electronic component, icons or graphical user interfaces (GUIs) displayed on a screen, decoration of a store, etc.).

When a design patent is enforced (for example, the patentee initiates a civil suit accusing a suspected infringer of patent infringement), the claim scope of the asserted design patent must be discussed in the court proceedings. This is because it is required that the claim scope of the design patent be determined before a comparison of the design patent and the accused product is conducted for judging whether the accused product infringes the patent.

‘Claimed Appearance’ and ‘Article’

The claim scope of a design patent is interpreted mainly on the basis of the claimed design features (i.e. the claimed appearance) shown in the drawings and the article to which the design is applied. Although the Taiwan Patent Act provides that the claim scope of a design patent must be determined based on the drawings of the patent, and that the specification of the patent serves as a reference when the claim scope is interpreted, the title and/or the usage indicated in the specification in fact serves to determine what kind of article the design is applied to; if the article to which a design is applied is an actual car, the claim scope cannot extend to a toy car with the same or similar appearance. However, a design for a component of a truck can extend its claim scope to a component of a car with the same or similar appearance because a truck and a car are under similar usage.

Colours in the drawings of a design patent will also be limitations of the claim scope if no disclaimer is made in the specification. In practice, if colours are clearly disclaimed in the specification initially filed with the patent office, the applicant will need to amend the drawings by changing the colours to greyscale.

May Chen is an associate partner at Lee and Li Attorneys at Law in Taipei