I. “Electronic Exchange of Design Patent Priority Documents between Taiwan and South Korea” is available
The Taiwan Intellectual Property Office (TIPO) and the Korean Intellectual Property Office (KIPO) signed a memorandum of cooperation in 2021, including design patents in the scope of electronic exchange, and will officially provide “Design Patent Priority Document Exchange” service on July 1, 2023, which may simplify the application procedures for a design patent application filed cross-country and also helps to speed up the examination process.
Patent and Trademark Counselor of RichIP Group
II. Regarding the design application practice with “Interim Measures for Examination related to the Implementation of the Patent Law” in China
The China National Intellectual State Intellectual Property Administration (CNIPA) introduced the partial design system on June 1, 2021. Nevertheless, the “Enforcement Rules” and the “Guidelines for Patent Examination” corresponding to the amended Patent Law have not yet been announced.
At present, we can only find the approximate direction of changes from the “Draft of Guidelines for Patent Examination to be amended (Ask for Comments)” released in August 2021, “Draft of Guidelines for Patent Examination to be amended (Ask for Comments Again)” released in October 2022, and “Interim Measures for Examination related to the Implementation of the Amended Patent Law” effected on January 11, 2023, and provide the following extract for references.
1. Precautions for filing a partial design patent application
I. Protection object of the partial design
Partial design is used to protect the partial shape, pattern or the combination thereof and the combination of the color, shape and pattern. The claim partial portion is preferably to be a part that can be separated from the product and named independently, such as “air vent of the camera”, ” tread of the tire” and so on.
II. Drawings or photographs for the partial design
Similar to the practical regulations of countries such as the United States, Japan and Taiwan, the applicant can use the solid lines and broken lines respectively or use a single-color translucent block to cover the parts that do not need protection to indicate the claimed design. When necessary, a dot-dash line may be used to indicate the boundary between the claimed part and disclaimed part in the partial design.
III. As for the specification
i. The title of the design
Corresponding to the object of protection, the title of the design should indicate the title of the claimed partial design or the title of the claimed whole design, for example, “the door of the car”, “the camera of the mobile phone”, “the panel of the oxygen generator”. For parts that are difficult to name independently, the applicant could apply the title of the whole design with the position term, such as “the body of the barbecue skewer”, or ” the front of the car”.
ii. The usage of the partial design
The usage of the claimed partial design should be stated and correspond to the usage reflected in the title of the design. Preferably, it is recommended to specify both usages of the whole and the partial design, for example, applying the format “the usage of the whole design is…, and the usage of the claimed partial design is…”, and due to the limitation of the filing system, both descriptions should be limited together into one sentence.
iii. Other descriptions
Preferably, further explain the expression of the subject application, such as the solid lines are applied to depict the claim portion and the broken lines are applied to depict the disclaimed portion; the portion covered by a translucent layer of a certain color is disclaimed portion; the dot-dash lines are applied to indicates the boundaries of the claimed and disclaimed portions, and the dot-dash lines form no part of the claimed design.
2. Precautions for modification of the whole design and the partial design and the combination application
I. Regarding the modification of the whole design and the partial design
At present, the examiner can only accept voluntary amendments within 2 months after filing the application. Beyond this period, even during the stage of response to the office action, the following amendments are inadmissible:
(1) Amending the whole design to a partial design;
(2) Amending the partial design to the whole design;
(3) Amending one partial design to another partial design in the same product.
The same applies to divisional applications, if the parent application is the whole design, filing a divisional application for a portion thereof is inadmissible; if the parent application is the partial design, filing a divisional application for the whole thereof is inadmissible.
II. Filing a plurality of partial design without a connection relationship
Two or more unconnected partial designs of the same product may be filed as one design if they are related in function or design and form a specific visual effect. For example, ” the two temples of the glasses”, and ” the four corners of the mobile phone”.
III. Regarding the combination application
Two or more similar designs for “the same product” (not the same category of products) can be filed as a combination application, the similar design means that the difference between multiple embodiments is only minor changes, the conventional design in the field, repeated design elements, and/or a variety of color.
It should be noted that the whole design and the partial design of the same product cannot be filed as a combination application.
Our group will keep following the update from CNIPA, and provide the information immediately to our esteemed customers.
Trademark and Patent Counselor of RichIP Group