IP Court Clarifies Determination on Functional Features of Design Patent
Date: 12 July 2022
According to Paragraph 1 of Article 124 of Taiwan Patent Act, shape of an article solely dictated by its function is not a subject matter eligible for design patent. Thus, it is quite important to determine whether the “features with functionalities” are features “solely dictated by its function” in infringement case. Taiwan Intellectual Property and Commercial Court clarified the determining principles recently in the judgment of a patent infringement case “PART OF REMOVAL TOOL FOR PLUG PORTION OF OIL SUMP” (Forward Tech Enterprise Co., Ltd. v Poul Chang Metal Industry Co., Ltd.)
Case Facts
Forward Tech Enterprise Co., Ltd.(plaintiff of the litigation), the patentee of Design Patent No. D195617 “PART OF REMOVAL TOOL FOR PLUG PORTION OF OIL SUMP”, filed a lawsuit and accused the defendant (Poul Chang Metal Industry Co., Ltd.) of selling the product at issue which infringed the design patent. However, Poul Chang claimed that the appearance of the product at issue did not fall within the scope of the patent at issue. They also indicated that the patent at issue was “shape of an article solely dictated by its function” rather than an eligible subject matter, and that it also failed to meet the creativeness requirement, so the patent at issue should be revoked. After trial, the court held that the patent at issue lack creativeness and should be revoked. The lawsuit filed by the plaintiff was therefore dismissed by the court.
Features of the patent at issue
The patent at issue is a design of “PART OF REMOVAL TOOL FOR PLUG PORTION OF OIL SUMP” as shown in the follow figures, which is a “partial design”. It is stated in the “DESCRIPTION” in the patent application that : one end of the bulk of a removal tool for plug portion of oil sump is a sleeving end and another end is a driving end. The sleeving end is in a hexagonal column shape with a central rectangular slot. The surface of slot is in a slightly inward concave arc. The top of the driving end is provided with an arc-shaped convex part at the edge.
Issues of this case:
I. Are Exhibit 1, Exhibit 2, Exhibit 3 and Exhibit 3-1 sufficient to prove that the patent at issue is “shape of an article solely dictated by its function”?
II. Can the combination of Exhibit 1, Exhibit 4, Exhibit 5 and Exhibit 9 prove that the patent at issue is obvious?
The opinion of the Intellectual Property and Commercial Court
1. The patent at issue is NOT “shape of an article solely dictated by its function”.
According to the specification of the patent at issue, the removal tool of the patent at issue is for removing plug portion of oil sump. According to the figures of the patent at issue, the center of its driving end is provided with “two convex parts with gaps and distributed in a straight line” while the center of driving end of the product at issue is provided with “linear shape convex part”. Thus, from the figures of the patent at issue and the exhibited appearance of the product at issue, the appearance of driving end of objects both for removing plug portion of oil sump is different. That is, removal tools of different shape can drive the same locking screw portion and plug portion as in Exhibit 1. It can be seen that there is no must-fit relationship between the removal tool, the locking screw portion and the plug portion in the appearance and shape.
Besides, removal tools may be designed in various way. According to the documents of the plaintiff, it is obvious that there is wide diversity of appearance design for the removal tool, and different designs can perform the same or similar function. Therefore, besides performing the function of removing plug portion of oil sump, the removal tool can be changed in shape or surface decoration of its appearance. They are not the basic shapes generated totally depending on function so that they must fit each other. The removal tool of the patent at issue is determined to have visual characteristics and be creation made by visual appeal rather than “shape of an article solely dictated by its function” for which patent application shall not be granted.
2. The combination of Exhibit 1, Exhibit 4, Exhibit 5, Exhibit 9 is sufficient to prove that the patent at issue is “obvious”.
The difference between the patent at issue and the Exhibit 4 lies in that for the top of removal tool of the patent at issue, the top of the driving end is provided with an arc-shaped convex part at the edge. However, the feature has been disclosed in the Exhibit 9. The patent at issue simply changed the shape of the sleeving end of the Exhibit 4 based on the driving end of the Exhibit 9 without other novel features leading to unique visual effect of the overall appearance of the patent at issue. Thus, the patent at issue is obvious for a designer of ordinary skill in the art with reference to the prior art in Exhibit 4 and Exhibit 9. In conclusion, the combination of Exhibit 4 and Exhibit 9, and the combination of Exhibit 1, Exhibit 4, Exhibit 5 and Exhibit 9, are both sufficient to prove that the patent at issue lacks of creativeness.
In addition, the prior arts are not limited to the same or similar article during the examination on creativeness. Thus, during the examination on creativeness of a design patent, the prior arts are not limited to those in the same field. International Classification for Industrial Designs is mainly a reference for examination and search, not a limit to the field of the prior art for comparison. Also, the removal tool of the patent at issue, the screw in Exhibit 1, the sleeve in Exhibit 4, the wrench element in Exhibit 5 and the screwdriver bit in Exhibit 9 all pertain to the field related to hand tools for locking and removing elements. The Exhibit 4 has disclosed “a hexagonal column with an inner rectangular slot”. A designer of ordinary skill in the art can easily obtain the design of the patent at issue by simple design solutions like simulation, adoption for other use, substitution or combination with cross-reference to the design feature, “the top of driving end with an arc-shaped convex part at the edge,” in Exhibit 9. Therefore, the patent at issue lacks of creativeness.
Wisdom Suggested Strategies
Design patent is a combination of design and a product which must provide certain functionalities. However, when determining whether the design feature of a product is solely dictated by its function, it should be considered that whether the feature is for ornamentation besides its functionalities and generates different visual effects. if the feature is for ornamentation, it should not be determined as that solely dictated by its function. Again1 , Taiwan Intellectual Property and Commercial Court clarified in this case that if alternations of design characteristics with the same function are present, the design patent provides ornamentation at the same time and fits the definition of design.
In addition, when examining creativeness, International Classification for Industrial Designs (LOC) is only a reference for examination and search. The combined references are not limited to be in the same field. The key point is still that whether a designer of ordinary skill in the art can easily obtain the design of the patent at issue by simple design solutions like simulation, adoption for other use, substitution or combination with cross-reference to references.
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[1]The same opinion can be seen in 2015 Xingzhuansuzi No. 32 Judgment of the Taiwan Intellectual Property Court (design patent application “COMPONENT OF A PORTABLE DISPLAY DEVICE”) and 2017 Minzhuanshangyizi No. 1 Judgment of the Taiwan Intellectual Property Court (design patent infringement case “WATER TANK FOR COOLING ENGINE”)
