Chapter 4
Design Patents
Article 109
The term " design" shall refer to any creation made in respect
of the shape, pattern, color, or combination thereof of an article
through eye appeal.
The term "associated design" as used herein refers to a creation
made by the same person, which is originated from and similar to
his/her original design.
Article 110
Any design that is industrially applicable and is free from any
of the following conditions may be granted a design patent upon an
application filed in accordance with this Act:
1. Which, prior to applying for patent, is preceded by an identical
or similar
design already published or put to public use; or
2. Which, prior to applying for patent, has become known to the
public.
In the event a design is under any of the conditions set out in
Paragraph One of this Article as a result of either of the following
events, and a patent application has been filed for said design
within six (6) months from the date of such event occurs, the design
shall be free from any of the restrictive condition set out in the
preceding Paragraph:
1. Where it has been displayed in an exhibition sponsored or
approved by the
government; or
2. Where it has been disclosed in a manner not agreed by the
applicant.
An applicant claiming the application of the definition set forth in
Item 1, Paragraph One of this Article shall indicate the facts and
the relevant date(s) in his/her application, and submit evidential
documents within the time limit specified by the Patent Authority.
Notwithstanding the fact that a design is not under any of the
conditions set out in Paragraph One of this Article, it shall still
not be granted a patent under this act if it can easily be conceived
by ordinarily skilled persons in the relevant art based on existing
prior art before the application for patent is filed.
If the same applicant applies for a patent on a design similar to
another design patent application filed by the same person, an
associated design patent application shall be filed in respect of
said similar design without being subject to the restrictions set
out in Paragraph One and in the preceding Paragraph of this Article.
However, if, prior to the filing of the original design patent
application, another design identical or similar to such associated
design has been published, or put to public use, or has become known
to the public, no associated design patent may be applied for and
granted under this Act.
No application for an associated design patent may be filed if the
design involved is claimed to similar to another associated design.
Article 111
Where a design claimed in a patent application is identical or
similar to the contents described in the specification or drawings
submitted along with an application for design patent filed prior to
but patented after the filing of the present patent application, no
design patent may be granted to the design, except that the
applicant(s) of the present application and such prior design patent
are the same.
Article 112
The following items shall not be granted design patents:
1. An article the shape of which is solely dictated by the function
of the said
article;
2. A pure fine arts creation or work;
3. Layout of integrated circuits and electronic circuits;
4. An article which is contrary to public order or good custom or
public health;
and
5. An article the shape of which is identical or similar to a
political party flag,
the national flag, a portrait of the Father of the ROC, the
national emblem,
the military flags, an official seal, or a medal awarded by the
government.
Article 113
A design claimed in a patent application is approved after
examination, it will not be published until the applicant shall
have, within three (3) months after the service of the written
decision, paid the issue fee and the first year annuity ; no
publication shall be made if the foregoing fees is not paid upon
expiry of the above-given deadline, and in this case, the patent
right so granted thereto shall become non-existent ab initio.
The claimed design in a patent application shall be granted a design
patent right upon the date of publication and a patent certificate
shall be issued thereto.
The duration of a design patent right shall be twelve (12) years
from the filing date of the patent application; and the duration of
an associated design patent right shall expire simultaneously with
the duration of the original design patent right.
Article 114
Where an application originally filed for an invention patent or
a utility model patent is converted into a design patent
application, the filing date of the original invention or utility
model patent application shall be taken as the filing date of the
design patent application provided, however, that no patent
conversion application may be filed from the date the written
decision granting a patent or after sixty (60) days from the written
decision rejecting a patent on the original patent application is
served.
Article 115
Where an application originally filed for an independent design
patent is converted into an associated design patent application, or
an application originally filed for an associated design patent is
converted into an independent design patent application, the filing
date of the original patent application shall be taken as the filing
date of the converted patent application provided, however, that no
patent conversion application may be filed from the date the written
decision granting a patent or after sixty (60) days from the written
decision rejecting a patent on the original patent application is
served.
Article 116
An application for a design patent shall be filed by the person
entitled to file the patent application by submitting to the Patent
Authority a written application accompanied by a specification and
drawings.
Where the person entitled to file a patent application is an
employer, assignee or heir, the name of the creator shall be
indicated in the application, and the document evidencing the
employment, assignment or inheritance shall be submitted along with
the application.
For an application for a design patent, the date on which the
written application and the accompanied specification and drawings
are submitted shall be the filing date of the patent application.
Where the accompanied specification and drawings initially submitted
are written in a foreign language, and the Chinese version thereof
are submitted within a given time limit fixed by the Patent
Authority, the date of submission of the foreign language version
shall be regarded as the filing date of that patent application;
failure to submit the Chinese translation by the given deadline
shall cause the dismissal of the patent application. However, if the
Chinese version of such accompanied specification and drawings are
submitted prior to the date on which an administrative measure is
taken, the date of submission of the Chinese version shall be
regarded as the filing date of the patent application.
Article 117
The specification and drawings as required in the preceding
Paragraph shall contain the title of the article embodying the
design, the description of the creation, the drawings or figures and
the description thereof.
The descriptions and drawings shall provide sufficiently clear and
complete disclosure so as to enable the ordinarily skilled persons
in the relevant art to understand the contents of, and to practice
said design.
The manner to disclose the specification and drawings of a design
shall be prescribed in the Enforcement Rules of the Patent Act.
Article 118
Where two or more patent applications are filed in respect of
the same or similar designs, only the design claimed in the first
application may be granted a design patent, except that the date of
priority claimed in the later application is earlier than the date
of application of the earlier application.
In case the filing date and the date of priority claimed under the
preceding Paragraph fall on the same day, the applicants involved
shall be required, by a notice, to settle the issue by an agreement,
and in the absence of such an agreement, no design patent shall be
granted to any of the applicants involved; whereas, if the separate
patent applications are filed by the same applicant, said applicant
shall be required, by a notice, to choose one therefrom as the valid
application, and no design patent shall be granted, if the applicant
fails to make such choice.
Where the applicants involved are required to reach a mutual
agreement under this Article, the Patent Authority shall further
require, by a notice, such applicants report the result of such
negotiation within a given period of time; and in the absence of the
report upon expiry of the given time limit shall be deemed as a
failure of such negotiation.
Article 119
In applying for a design patent, one application shall claim one
design only.
A design patent application shall designate the article to which the
design is applied.
Article 120
In case a design patent application is found to be in violation
of the provisions of Article 109 through Article 112, Article 117,
Article 118, Paragraph One, Article 119, or Paragraph Three, Article
122 of this Act, a disapproval decision shall be made.
Article 121
Where a claimed design in a patent application is considered,
through patent examination, not un-patentable, a patent right shall
be granted to the claimed design, and the drawings accompanied
thereto shall be published.
Article 122
When examining an application for a design patent, the Patent
Authority may, at a request or ex officio, notify the applicant to
do the following acts within a specified time limit:
1. To appear before the Patent Authority for an interview;
2. To submit models or samples; or
3. To supplement or amend the specification or drawings.
The Patent Authority may, when necessary, visit the site or a
designated place for inspection and observation of the models or
samples which are required to be submitted under Item 2 of the
preceding Paragraph.
The content of supplement or amendment to be made under Item 3 of
Paragraph One above shall not exceed the scope of contents as
disclosed in the original specification and drawings submitted along
with the patent application.
Article 123
Unless otherwise provided for in this Act, for the designated
article to which a patented design is applied, the patentee of such
design patent shall have the exclusive right to preclude others from
manufacturing, offering for sale, selling, using or importing for
above purposes the articles of the design or similar design as
claimed in the design patent without his/her prior consent.
The scope of the design patent right shall be determined based on
the drawings of the patented design. When interpreting the scope of
claim, the descriptions of the design patent made in the
specification of the creation may be used as reference.
Article 124
The patent right of an associated design is attached to the
patent right of the original design. An associated design right
shall not be claimed separately, nor shall its effect be extended to
the scope of similarity.
The patent right of an associated design shall be revoked or
extinguished concurrently with the revocation or extinguishment of
the patent right of the original design.
Article 125
The effect of a design patent right shall not extend to any of
the following matters:
1. Where the design is put into practice for the purposes of
research, teaching
or experiment without any profit-seeking actions;
2. Where, prior to the patent application, the design article has
been put into
use in this country, or where all necessary preparations have
been
completed for such purpose; with the exception that the
information of the
design was obtained from the patent applicant within six (6)
months prior to
the patent application and, that the patent applicant has
made a statement
to reserve its patent right therein;
3. Where the article has already been in existence in this country
prior to the
patent application;
4. Where the article is simply a vehicle or a device thereof that
passes the
territory of this country;
5. Where a licensee has used the design or has completed the
necessary
preparations for the use said design in good faith in this
country prior to the
revocation of the patent right, which is obtained by a person
who is not
entitled to apply for patent, as a result of a invalidation
action filed by the
patentee; and
6. Where the patented articles manufactured by the patentee or under
the
consent of the patentee are put to use or resold after the
sale thereof.
The aforesaid manufacture and sale are not limited to the
manufacture and sale in this country only.
The user referred to in Items 2 and 5 of the preceding Paragraph may
continue the use of the design only in its original enterprise. The
geographic areas in which sale can be made under Item 6 of the
preceding Paragraph shall be determined based on the facts by the
court.
In case the licensee set forth in Item 5, Paragraph One of this
Article keeps practicing the design after the patent right over such
design has been revoked due to an invalidation action, said licensee
shall pay to the patentee of that design a reasonable royalty to be
calculated from the date of his/her receipt of a notice of the
patent right revocation given by said patentee.
Article 126
A design patentee may assign, entrust, license, pledge the
design patent right to others for putting the design into practice
in respect of the articles designated for application thereof, and
such assignment, entrustment, licensing, or pledging may not be
asserted against any third party, unless having been registered with
the Patent Authority. Notwithstanding the proceeding provision, an
associated design shall not be separately assigned, entrusted,
licensed, or pledged.
Article 127
A design patentee may file an application with the Patent
Authority for correcting only the mistake or obscure statement
contained in the specification and drawings of the granted patent.
After approval of the correction(s) made in accordance with the
preceding Paragraph, the Patent Authority shall publish the cause
for such correction(s) in the Patent Gazette.
The correction(s) approved and made in the specification and
drawings shall take effect retroactively from the filing date of
said design patent application.
Article 128
Under any of the following circumstances, a design patent right
shall be revoked and the patent certificate shall be recalled within
a given time limit by the Patent Authority, upon the institution of
an invalidation action or ex officio and if a recall fails, a public
notice for revocation of the patent certificate at issue shall be
published:
1. If the design is in violation of the provisions of Paragraph One,
Article 12,
Article 109 through Article 112, Article 117, Article 118 or the
provisions of
Paragraph Three, Article 122 of this Act;
2. If the home country of the applicant does not accept the patent
applications filed therein by nationals of the ROC; or
3. If the design patentee is not the person entitled to file the
design patent
application.
An invalidation action against a patented design for its violation
of the provision set out in Paragraph One, Article 12 hereof or the
provision set out in Item 3 of the preceding Paragraph of this
Article may be instituted only by an interested party to such case;
whereas under any other circumstances set out in the preceding
Paragraph, an invalidation accompanied by relevant evidences may be
filed with the Patent Authority by any person.
Article 129
The provisions of Article 27, Article 28, Article 33 through
Article 35, Article 42, Article 43, Paragraph Two, Article 45,
Article 46, Article 47, Article 60 through Article 62, Article 65,
Article 66, Paragraph Three and Paragraph Four of Article 67,
Article 68 through Article 71, Article 73 through Article 75,
Article 79 through Article 86, and Article 88 through Article 92
shall apply mutatis mutandis to design patents.
In the case of design patent applications, the period specified in
Paragraph One of Article 27 shall be six (6) months instead. |