Official proposal for revising design patent examination guidelines released

Computer-generated icons and graphical user interface (GUI) are designs that are generally produced by computer programs, are installed in and appear temporarily on electronic devices and are created by pattern or a combination of pattern and colour.

Article 121(2) of the Taiwanese Patent Act states that a design patent can be obtained for computer-generated icons and GUI. The current patent examination guidelines for designs state that applicants should submit a specification, which must provide a title, an article or product to which the design could be applied and a description of the design, as well as drawings.

An article to which an icon or a GUI design is applied comes under the generalised term ‘display’, which can be used when looking for a broad scope of protection. The specification and drawings are provided in the same way as for a partial design. The drawings should clearly define the claimed and unclaimed parts of the design. A claimed icon or GUI should be presented in solid lines and the article to which the claimed icon or GUI is applied should be shown in dotted lines. Further, the description should disclose the unclaimed parts in the drawings.

The icon or GUI is not limited to a certain position, size or by its distribution – a user may freely drag, zoom in or out on a screen, monitor or display panel. The description should disclose whether the design characteristics of the icon or GUI contains its position, size or distribution in relation to its surroundings.

The invention patent examination guidelines state that a software program can be claimed as an article in an invention patent application. This program is not bound to the form of the article loading it, as prescribed in the current invention patent examination guidelines. However, the guidelines do not cover icons generated by projection or virtual reality icons. Whether the actual infringer of an icon design patent is the display panel manufacturer or the software manufacturer is uncertain.

Article 121 of the Patent Act currently states that defining an article to which an icon or GUI is applied must involve software or an app.The carrier in which the software or app is loaded is not confined to a screen, a projector or a head-mounted display device.

The Taiwanese Intellectual Property Office plans to revise the guidelines for icon design patent examinations. It will be possible to omit the written expression stating that the unclaimed part is shown in dotted lines from the description of the design specification. Further, the title of the icon or GUI design application can be changed from a screen icon or a GUI display to a software program icon or a GUI of a software program.