【Patent】On Design Patent’s Future In Taiwan
Ever-increasing Significance of Design Patents
On August 24, 2012, a jury in a patent infringement lawsuit, Apple v. Samsung [4:2011cv01846], heard by the U.S. Court of Appeals for the Federal Circuit, ordered Samsung to pay Apple 1.05 billion US Dollars’ damages. The jury held that 23 products sold by Samsung infringed on three design patents (D593,087, D618,677, D604,305), three invention patents (US 7,469,381, US 7,864,163, and US 7,844,915), and two instances of trade dress, all owned by Apple. During the litigation, the design patents are not only regarded as the core issues pertaining to a preliminary injunction application but are also deemed a key factor in winning sky-high damages.
Under the U.S. patent law, although compensatory damages awarded to a patentee whose invention patent right is encroached upon shall be commensurate with an economic loss or a reasonable royalty approved by a court, a patentee whose design patent right is encroached upon may claim compensatory damages equal to the profit made by the tortfeasor in selling the tortious product, thereby indicating that design patents surpass invention patents in the amount of damages awarded
The aforesaid patent infringement lawsuit, which is dubbed the Trial of the Century, not only draws the industrial sector’s attention to the importance of design patents, but also manifests attack and defense tactics, gives a verdict, and yields damages to tell the industrial sector it is wrong to believe that invention patents are more valuable than design patents. Plenty of experts are of the opinion that Apple’s products prevail on the market because of Apple’s product designs instead of Apple’s know-how, and the opinion is verified by the huge amount of damages awarded to Apple in the aforesaid lawsuit.
Design Patents Under Taiwan’s Current Patent Law
The Patent Act which came into effect on January 1, 2013 in Taiwan paves the way for an influential reform on the statutory subject matters of design patents by expanding the precincts of full designs to include subject matters of partial designs, computer images, graphical user interface (icons & GUI), packaged designs, and derivative designs, and giving broader, bolder protection to design patents, with a view to meeting the demand for domestic industrial development and getting in line with the international community.
Before January 1, 2013, Taiwan-issued design patents were restricted to the “general appearance” of an “object”, and Taiwanese courts ruled for infringement complainants only when a tortious product borrowed all the general appearance-related creative features of the object.
Under Taiwan’s current Patent Act, an inventor can file a design patent (partial design) application regarding a portion of the creative features of an object, for example, claiming only the appearance of a laptop lid (see the diagrams below, Apple’s US D661,296). Hence, the appearance of a single product may give rise to multiple design patents, whereas a design patent may be embodied in different series of products.
.JPG)
Apple’s US D661,296 design patent
User interfaces, static or dynamic changes of images, which are rapidly developed as a result of the advent of smartphones and tablets years ago, are not treated as statutory subject matters of design patents in Taiwan before January 1, 2013, but are treated as statutory subject matters (under the category “computer images and graphical user interfaces”) of design patents in Taiwan after January 1, 2013. The aforesaid legal reform on design patents in Taiwan not only encourages, protects, and promotes Taiwan’s burgeoning software design industry, but also enables an applicant to file design patent applications for similar designs of user interfaces or images by employing derivative design patent application strategies, for example, a series of computer image designs which come in the same appearance but different colors (as shown in the diagrams below, US D665,817, wherein a U.S. design patent can embody at least one embodiment and thus entitles the applicant to filing a derivative design patent application in Taiwan), thereby allowing the applicant to carry out complete and comprehensive patent strategies.
.png)
USD665,817 image design patent
Conclusion
Design patents, invention patents, and utility model patents are three categories which differ from each other in terms of nature. Invention patents and utility model patents protect technical ideas, whereas design patents protect the appearance of objects. With industrial products being creativity-oriented, whether domestic or overseas, the importance of design patents is not to be ignored. Both the know-how and the looks of a product are usually addressed during the research and development (R&D) stage and thus are equally important to the product’s potential patentees. Hence, full and flawless patent strategies not only benefit patentees by exercising the patentees’ patent rights and licensing the patentees’ patents but also protect the patentees in conducting patent infringement litigations or even by wielding robust attack and defense weapons during the patent infringement litigations.
References
1. “Analysis of Damages Calculation: Apple vs. Samsung,” Patent Intelligence, Technological Industrial Information Office, August 30, 2012 http://cdnet.stpi.narl.org.tw/techroom/pclass/casefocus/2012/pclass_casefocus_12_001.htm
2. Yie, Xuemei, “On Damages Awarded to Complainants of Design Patent Infringement in the United States: illustrated by the infringement lawsuit where Apple was awarded 1.05 billion US Dollars’ damages,” Intellectual Property Rights Monthly, Vol. 174, 2013/06.
On August 24, 2012, a jury in a patent infringement lawsuit, Apple v. Samsung [4:2011cv01846], heard by the U.S. Court of Appeals for the Federal Circuit, ordered Samsung to pay Apple 1.05 billion US Dollars’ damages. The jury held that 23 products sold by Samsung infringed on three design patents (D593,087, D618,677, D604,305), three invention patents (US 7,469,381, US 7,864,163, and US 7,844,915), and two instances of trade dress, all owned by Apple. During the litigation, the design patents are not only regarded as the core issues pertaining to a preliminary injunction application but are also deemed a key factor in winning sky-high damages.
Under the U.S. patent law, although compensatory damages awarded to a patentee whose invention patent right is encroached upon shall be commensurate with an economic loss or a reasonable royalty approved by a court, a patentee whose design patent right is encroached upon may claim compensatory damages equal to the profit made by the tortfeasor in selling the tortious product, thereby indicating that design patents surpass invention patents in the amount of damages awarded
The aforesaid patent infringement lawsuit, which is dubbed the Trial of the Century, not only draws the industrial sector’s attention to the importance of design patents, but also manifests attack and defense tactics, gives a verdict, and yields damages to tell the industrial sector it is wrong to believe that invention patents are more valuable than design patents. Plenty of experts are of the opinion that Apple’s products prevail on the market because of Apple’s product designs instead of Apple’s know-how, and the opinion is verified by the huge amount of damages awarded to Apple in the aforesaid lawsuit.
Design Patents Under Taiwan’s Current Patent Law
The Patent Act which came into effect on January 1, 2013 in Taiwan paves the way for an influential reform on the statutory subject matters of design patents by expanding the precincts of full designs to include subject matters of partial designs, computer images, graphical user interface (icons & GUI), packaged designs, and derivative designs, and giving broader, bolder protection to design patents, with a view to meeting the demand for domestic industrial development and getting in line with the international community.
Before January 1, 2013, Taiwan-issued design patents were restricted to the “general appearance” of an “object”, and Taiwanese courts ruled for infringement complainants only when a tortious product borrowed all the general appearance-related creative features of the object.
Under Taiwan’s current Patent Act, an inventor can file a design patent (partial design) application regarding a portion of the creative features of an object, for example, claiming only the appearance of a laptop lid (see the diagrams below, Apple’s US D661,296). Hence, the appearance of a single product may give rise to multiple design patents, whereas a design patent may be embodied in different series of products.
Apple’s US D661,296 design patent
User interfaces, static or dynamic changes of images, which are rapidly developed as a result of the advent of smartphones and tablets years ago, are not treated as statutory subject matters of design patents in Taiwan before January 1, 2013, but are treated as statutory subject matters (under the category “computer images and graphical user interfaces”) of design patents in Taiwan after January 1, 2013. The aforesaid legal reform on design patents in Taiwan not only encourages, protects, and promotes Taiwan’s burgeoning software design industry, but also enables an applicant to file design patent applications for similar designs of user interfaces or images by employing derivative design patent application strategies, for example, a series of computer image designs which come in the same appearance but different colors (as shown in the diagrams below, US D665,817, wherein a U.S. design patent can embody at least one embodiment and thus entitles the applicant to filing a derivative design patent application in Taiwan), thereby allowing the applicant to carry out complete and comprehensive patent strategies.
USD665,817 image design patent
Conclusion
Design patents, invention patents, and utility model patents are three categories which differ from each other in terms of nature. Invention patents and utility model patents protect technical ideas, whereas design patents protect the appearance of objects. With industrial products being creativity-oriented, whether domestic or overseas, the importance of design patents is not to be ignored. Both the know-how and the looks of a product are usually addressed during the research and development (R&D) stage and thus are equally important to the product’s potential patentees. Hence, full and flawless patent strategies not only benefit patentees by exercising the patentees’ patent rights and licensing the patentees’ patents but also protect the patentees in conducting patent infringement litigations or even by wielding robust attack and defense weapons during the patent infringement litigations.
References
1. “Analysis of Damages Calculation: Apple vs. Samsung,” Patent Intelligence, Technological Industrial Information Office, August 30, 2012 http://cdnet.stpi.narl.org.tw/techroom/pclass/casefocus/2012/pclass_casefocus_12_001.htm
2. Yie, Xuemei, “On Damages Awarded to Complainants of Design Patent Infringement in the United States: illustrated by the infringement lawsuit where Apple was awarded 1.05 billion US Dollars’ damages,” Intellectual Property Rights Monthly, Vol. 174, 2013/06.
