In Taiwan, when deciding design patent infringement cases, the Intellectual Property Court (IP Court) will refer to the Directions for Determining Patent Infringement issued by the Taiwan Intellectual Property Office (TIPO). These Directions were recently amended to expressly incorporate the holding of the Egyptian Goddess, Inc. v. Swissa, Inc. decision handed down by the United States Court of Appeals for the Federal Circuit.
The amended Directions include the following significant changes to factors to be considered in determining design patent infringement:
- Design patent infringement should now be assessed taking into consideration only the perspective of the “ordinary observer.” Prior to the amendment, the “point of novelty” was also considered in determining infringement;
- The ordinary observer is defined as someone who is reasonably familiar with the patented product as well as with the prior art; and
- The analysis of the similarity between the patented design and the accused product now adds the “three way comparison test” (i.e. comparison based on visual analysis of the prior art, the patented design and the accused product).
In the past, it was challenging for design patent holders to succeed in their infringement lawsuits (from 2008 to the present, only 30% of design patent infringement cases resulted in a determination of infringement) because minor differences between the patented design and the accused product would often be deemed to constitute a point of novelty. The existence of a point of novelty in the accused product led to a determination of no infringement. This was sometimes the case even if, from the ordinary observer’s perspective, the patented design and the accused product looked extremely similar or nearly identical.
The point of novelty issue was extensively discussed and ultimately abolished by the US Court of Appeals for the Federal Circuit in the Egyptian Goddess case. The same standard has now been adopted in Taiwan, which shows that the TIPO continues to monitor international developments and trends in intellectual property to see where modifications may be needed.
We are confident that the incorporation of Egyptian Goddess into the determination of design patent infringement in Taiwan will result in more consistent decisions handed down by the IP Court and a more predictable scope of protection for design patent holders.