Chapter 4 Design Patents

Article 109 Definition of “design” and “associated design” patent
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 Novelty & industrial applicability
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 Novelty
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 is（are） the same.

Article 112 Unpatentable designs
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 Issue and term of patent
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 Time limit for conversion
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 Time limit for conversion
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 Application for design patent; filing by other than creator; requirements for receiving filing date          
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 Specification and drawings
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 Applications for an identical or similar design 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 One application, one design; designation of article
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 Provisions for refusal of a patent
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 Interview; models or specimens; manner of amendment
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 Exclusive right
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 Limitations on exclusive right: exemption of certain acts
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 Effect of recordation of assignment; license and patent-related pledge
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 Correction of specification/drawings after issuance of patent
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 Grounds and proceedings for cancellation of patent right
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 Applicability of other provisions
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.