Associated Design Patent under the Patent Law .1 The Nature of an Associated Design

The term “associated new design” as used herein refers to a creation made by a person, which is originated from and similar to an original design of the same person (see Paragraph 2, § 109 of the Patent Law). According to page 57 of the As-sessment Guidelines, the scope of a design patent covers any design that is the same or similar to the design shown in the design patent.²⁶ Therefore, if two de-signs are similar, their patent rights overlap.²⁷ On the basis of the above, the asso-ciated design patent system seems to solve the double patenting problem in design

26 The same design means that both the visuals features of the two designs and the articles that embody the designs are the same, and similar design means that (i) the visual features of the two designs are similar and the articles that embody the designs are similar; (ii) the vis-ual features of the two designs are the same and the articles that embody the designs are similar; or (iii) the visual features of the two designs are similar and the articles that em-body the designs are the same; 葉雪美，同前註。

27 黃文儀，「新式樣近似判斷之相關理論」，2001 全國科技法律研討會論文集，頁

14-23（2001）。

patents. It is well understood that double patenting is prohibited to prevent the same applicant from prolonging the term of the same exclusive patent right from of an earlier filed patent application. Under U.S. practice, there are two types of dou-ble patenting: same-invention type doudou-ble patenting under § 171 of the U.S. patent law, and non-statutory type double patenting,²⁸ also known as obvious-type double patenting. For non-statutory type double patenting, the applicant can file a terminal disclaimer to relinquish the right for the second patent upon conclusion of the term of the first patent so that the same exclusive right will not be inappropriately pro-longed.²⁹ As to same-invention type double patenting, the applicant can only can-cel the application for the second patent to overcome the rejection. The term of an associated design patent, however, expires when its original design patent expires (see below Figure 7, and Paragraph 3, § 113). Accordingly, the associated design patent system seems to resolve a problem similar to the above U.S. non-statutory type double patenting problem.

Figure 7

Paragraph 5, § 110 of the Patent Law stipulates: “where a person applies for a patent for a new design similar to another new design already filed by him/her, an associated design patent application shall be filed with respect to the said similar

28 UNITED STATES PATENT AND TRADEMARK OFFICE, THE US MANUAL OF PATENT EXAMINING

PROCEDURE 2001 § 1504.06 (2001).

29 Id.

Expire at the same date Less than 12 years

12 years Filing date of the original design application

Filing date of the associated design application

new design without being subject to the restrictions set out in Paragraph 1 (novelty requirement) and in Paragraph 4 (creativeness requirement) of this Article.” Thus, a

“similar” design, but not a “same” design should be filed as an associated design patent application. If the designs in two applications owned by the same person are exactly the same (“same design” filing results from accidentally filed duplicate fil-ings), the later-filed application will be rejected by the IPO or must be cancelled by the applicant. Moreover, the later-filed application cannot be saved by filing an as-sociated design patent application. If two same design patent applications are filed on the same date, the applicant will be required to choose one; otherwise, both will be rejected. This situation is similar to the same-invention type double patenting rejection under U.S. practice in which filing of a terminal disclaimer cannot save the later application.

4.1.2 Under Current Patent Law, How to Do Deal with a Taiwan Design Patent Filed with Priority Documents Containing Multiple Embodiments

If a priority document (such as a U.S. priority document) contains multiple embodiments, to meet the one-embodiment requirement under the Patent Law, the applicant for the corresponding R.O.C. (Taiwan) patent applications needs to de-cide whether (i) to file one embodiment as the parent application and the rest as the parent’s associated design patent applications,³⁰ or (ii) to file separate independent design patent applications for each embodiment. In the former case, the scope of patent right is restricted because the associated design patents do not have their own independent scopes; while in the latter case the collective scope of patent right

30 Since the applicant includes the multiple embodiments in the priority document, they should be similar designs. However, the similarity of embodiments in the priority document may vary by case, and so it is still possible that they are considered as patentably distinctive from each other in Taiwan.

is broader because each design patent has its own scope of similarity（近似範 圍）. However, in the latter case, if the embodiments are considered similar, the examiner will require them to be arranged as in the former case, and additional cost will be incurred. Alternatively, the applicant may choose to initially submit the multiple embodiments within a single design patent application and wait until re-ceiving an office action to respond (i.e. (i) designate one embodiment as the parent and file divisional applications covering the rest or (ii) choose one as the parent and convert the rest to associated design patent applications of the parent). There have even been cases in which the examiner first asked the applicant to file divisional applications for each embodiment, but in the next office action asked the applicant to arrange them as one parent and multiple associated design patent applications, incurring even greater cost. Applicants are therefore advised to file separate design patent applications at the outset, thereby covering a broader scope of inclusive rights, if allowed; and if rejected, they can still be arranged as parent and associated design patent(s) at a later stage.

4.1.3 Definition of the Term “Similar” in Paragraph 2, Article 109 of the Patent Law

The term “similar” is repeatedly mentioned in the Patent Law, the Enforce-ment Rules of the Patent Law and the Guidelines. It is understood that the meaning of “similar” is different in novelty analysis than in analysis of creativeness/non-obviousness. A design is devoid of novelty if the design is the same or similar to the prior art reference such that an “ordinary observer” will confuse the two and mistake one for the other,³¹ while a design is devoid of creativeness if a “person skilled in the art” can easily conceive the claimed design in view of a single prior

31 See p.3-3-7 of the Guidelines.

art reference or a combination of prior art references.³² Since the associated design patent system functions to avoid the double patenting problem, the design in the original design patent should be “patentably” indistinguishable from that in the as-sociated design patent(s). A design is not patentable if it is devoid of novelty or devoid of creativeness. The standards for determining novelty of a design are dif-ferent from those for creativeness, and the degree of similarity in novelty analysis is stricter than that in creativeness analysis. Accordingly, when defining associated design patent as in Paragraph 2, § 109 of the Patent Law, the term “similar” should be understood as adopting the standard applied to creativeness analysis.

4.1.4 An Associated Design Patent Depends from Its Original Design Patent

An associated new design patent right shall not be claimed separately, nor shall its effect be extended to the scope of similarity (see Paragraph 1, § 124). The patent right of an associated new design shall be revoked or extinguished concur-rently with the revocation or extinguishment of the patent right of the original new design (see Paragraph 2, § 124). An associated new design shall not be independ-ently subject to assignment, trust, licensing or pledge creation (see § 126). Accord-ingly, an associated design patent depends from an original design patent, and does not have its own scope of similarity³³ (see below Figure 8). Under local practice, an associated design patent is often cited to substantiate or answer a challenge to the scope of its original design patent.³⁴ That is, if, prima facie, it is unclear whether an accused design is similar to the original design patent but it is clear that

32 See para 4, § 110 of the Patent Law.

33 顏吉承，「聯合新式樣制度與新式樣之近似概念（上）」，智慧財產權月刊，第 86

期 ， 頁 99-128 （ 2006 ） ； 顏 吉 承 ， 「 聯 合 新 式 樣 制 度 與 新 式 樣 之 近 似 概 念

（下）」，智慧財產權月刊，第 87 期，頁 68-84（2006）。

34 See supra note 2.

the accused design is similar to an associated design patent of the original design patent, it will be concluded that the accused design is also similar to the original design patent.

Original design patent Associated design patent Scope of similarity

Figure 8

The patent right of an associated new design patent is subordinate to the ent right of the original design patent (Paragraph 1, § 124). In other words, the pat-ent right of an associated design patpat-ent cannot be independpat-ently enforced; it must be enforced simultaneously with the original design patent. According to Paragraph 5, § 110 of the Patent Law, if, prior to the filing of the original design patent appli-cation, another new design identical with or similar to such associated new design has been published, or put to public use, or has become known to the public, no associated design patent may be applied for or granted. Accordingly, it is possible that a prior art reference published prior to the filing of the original design patent application is similar to the original design but not similar to the associated design, and such a prior art reference would not directly bar an associate design patent ap-plication from being granted a patent right (see below Figure 9). However, such prior art reference can be used to negate the patentability of the original design pat-ent application; since the associated design application depends from the original design patent application, once the original design patent application is rejected, the associated design patent application still cannot be granted a patent right.

Prior art reference Original design patent Associated design patent Scope of similarity

Figure 9

Where a design is similar to one disclosed in an associated design patent ap-plication filed by the same applicant, the applicant shall not file an associated new design for the said new design (see Paragraph 6, § 110). The rationale of the aforementioned provision may be that since an associated design patent may be cited to substantiate its original design patent, if the original design patent is an associated design patent, there will be no scope of similarity to substantiate. An-other possible rationale is to avoid unreasonable extension of the original design patent’s scope of similarity. For example, it is possible that design B is similar to designs A and C, but designs A and C are not similar to each other. If design B is an associated design of design A, then allowing design C to be filed as an associated design of design B would be unreasonable because it would incorrectly imply that design C is also similar to design A.

4.2 Derivative Design Patent under the Act