Design Patent Application & Portfolio

1. What is a Design Patent?

A design patent protects “visible aesthetic impressions” — defined under ROC law as “shape, pattern, color or combinations thereof.” This includes GUI, ICON, LOGO, and more.

2. Metaverse, NFT, 3D Printing, AR, VR, MR — All Need Design Patents

As mentioned above, anything visible can be protected by a design patent. In the digital age, creators’ works are spread across online markets. Design patent protection offers more definitive protection than copyright alone.

3. Protecting Building Exteriors, Landscape Designs, or Interior Designs

Since visible impressions can be protected, larger-scale designs are naturally included. A creator’s vision, without protection, can easily be exploited by competitors via “free riding” with little effective recourse.

4. Five Differences and Seven Misconceptions About Copyright vs. Design Patents

Most creators mistakenly believe copyright law alone guarantees all rights. In practice, having the “right” first allows you to take initiative. However, the challenge when using copyright as a remedy is: “works without copyright” and “infringers with no plagiarism.”

1.1 Ambiguous Scope of Design Patent

When a person skilled in the art cannot determine the disclosed design scope from any view, the examiner may issue an objection. In other words, when the claimed scope cannot be inferred from all disclosed drawings, multiple interpretations may arise.

1.2 Inconsistency Between Drawings

When the style shown in views or drawings is inconsistent and cannot be understood as a single design by a person skilled in the art, the examiner will issue an objection. Example: a part appears circular in the top view but elliptical in the perspective view at the same position.

1.3 Non-Enablement

When the drawings or description cannot be understood by a person skilled in the art, an objection may be issued. Example: drawing lines cannot be understood by a person skilled in the art and it is unclear how they are realized.

1.4 Objections to Drawing Disclosure

When the drawings or description can be understood but contain errors, the examiner will issue a notice for correction. Example: errors in shadow line rendering.

A design patent application may only cover a single appearance applied to a single article. Some countries allow “multiple embodiments” in one application. Prior to filing, during prosecution, and for foreign applications, reviewing the drawing scope is always essential. When choosing to file design patents in different countries, it is necessary to consider priority issues and whether there is an opportunity to expand the design patent scope.

International design systems mostly require that a “design” be implemented on an “article.” A frequently discussed topic is computer-generated icons (GUI) applied to articles. Taiwan currently allows protection of ICONs and GUIs. When filing abroad, certain differences must be noted.

4.1 Novelty

When a “design” has been publicly disclosed online, through exhibitions, sales, or commercial use, novelty may be affected. Applicants should know how to avoid or address this.

4.2 Non-Obviousness (Individual Character)

If an applicant “imitates” or “borrows” others’ “designs,” there may be concerns over trademark infringement, copyright infringement, or patent non-obviousness requirements.

The quantity and position of shadow lines, types of line strokes, representation of materials, interpretation of lines, and how different regions express line strokes in drawings all vary. Applicants should pay special attention to the intended meaning and interpretation of lines. The design patent scope that applicants tend to overlook is their own “design patent coverage.”

The key decisions affecting an applicant’s rights include: expanding the scope (areas that could be broadened beyond prior art but left unprotected should be included in the portfolio) and narrowing the scope (completed designs should be narrowed after comparing prior art to avoid prior art affecting the patent requirements, though perception gaps may exist and can have critical impact on future claim scope).

3. Description

The applicant needs some textual explanation and description of the design patent content. This text will affect the scope of the design patent rights. Appropriate wording can allow an application to “design around prior art,” “create room for prosecution,” or “expand the patent scope.”

There are many modeling methods. To provide applicants with the most appropriate design patent scope, we recommend suitable modeling approaches such as 3D modeling, 3D scanning, etc.

Some designs require more views and angles to present the patent scope of a design patent; others need fewer views to resolve or adjust the claim scope. With the assistance of a patent attorney, you can achieve better design patent portfolio planning. Not all views need to be submitted as perspective plus six-side views. Appropriate adjustments to the number of drawings help improve the quality of the application and the interpretation of claim scope, and avoid unnecessary examination objections.