IP Court Overrules Decision of TIPO for Design Patent Obviousness
Date: 26 July, 2024
【Volume 141】
The Intellectual Property and Commercial Court of Taiwan (hereinafter “IP Court”) in the invalidation case of Design Patent No. D190010 for a "lamp base" overturned the decision of the Taiwan Intellectual Property Office (TIPO) and the appeal decision. The IP Court reaffirmed that determination of non-obviousness in design patents should follow the principle of overall comparison rather than comparing partial features individually (2021 XingZhuanSuZi No. 42 Judgment).
Case Fact
The plaintiff and petitioner, Advanced UV, Inc., claimed that Taiwan Design Patent No. D190010 for a "lamp base " lacked non-obviousness, and filed an invalidation request with the TIPO, which dismissed the claim. Unsatisfied, Advanced UV appealed to the Ministry of Economic Affairs (MOEA), which also rejected the appeal. Advanced UV then filed a lawsuit with the IP Court, which overturned the decisions of both the TIPO and the MOEA, ruling that the claimed design lacked non-obviousness.
Main Disputed Issue
The main issue in this case is whether the arrangement of the "four-petal protrusions" (red circle in the image below) or the height-to-width ratio of the base (green arrow in the image below) are merely simple modifications in design proportions in the claimed design (D’010 Patent) and the cited reference. The question is whether the cited reference can demonstrate that the D’010 Patent lacks non-obviousness.
Comparison Between theD’010 Patent and the cited reference
The D’010 Patent is a "lamp base" characterized by multiple overlapping layers of the base, with the topmost layer having a continuous curved contour resembling four petals. Each petal's front end extends into a metal pin used for discharge, with a total of four pins.
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| perspective view | front view | rear view | left side view | right side view | top view | bottom view |
【The claimed design (D’010 Patent)】
The cited reference is Taiwan Design Patent No. D149382 for a "UV lamp base," published on September 21, 2012, as shown in the image below.
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| perspective view | front view | top view | bottom view |
【The cited reference (D‘382 Patent)】
The issue in this case is whether the arrangement of the "four-petal protrusions" or the height-to-diameter ratio of the base demonstrate non-obviousness of the D’010 Patent.
IP Court Decision
The IP Court overturned the decisions of the TIPO and the appeal board.
The IP court noted that when comparing the design of the patent application with prior art, the focus should be on the overall appearance of the design, rather than examining partial features individually. Specifically, the emphasis should be on the features that easily attract the attention of ordinary consumers, such as the aforementioned "four-petal protrusions", then integrating visual effects of other parts that contribute to the unified appearance of the design. TIPO's approach of separately comparing top and front views and amplifying small differences has already deviated from the principle of overall comparison in design patents, and was therefore deemed inappropriate.
The IP court found that although there are differences in the "square" and "rectangular" arrangements of the "four-petal protrusions" mentioned by the TIPO between theD’010 Patent and the cited reference, these differences fall under geometric designs of "rectangular" arrangements. Minor adjustments in spacing do not create significant visual differences. Furthermore, both the arrangement of the "four-petal protrusions" and the height-to-diameter ratio of the base are simple modifications in design proportions. A person skilled in the art could easily conceive the D’010 Patent based on the cited reference. Moreover, the modifications do not present a unique visual appearance comparing with the cited reference, thus lacking non-obviousness.
The IP Court overrules decision of TIPO and corrected the TIPO's assessment of non-obviousness in this case.
When determining non-obviousness, the TIPO often overemphasizes minor design differences. In this case, the IP Court reiterated that the focus should be on features that catch the attention of ordinary consumers and consider the overall visual effect of the design, rather than comparing partial features individually. Moreover, whether the overall visual effect of the design can create a distinctive visual effect from the prior art should be accessed. Although the TIPO identified small circular bases at the top of the "four-petal protrusions", creating a visual effect that the petals protrusions and the tube appear in an escalating way, the IP Court ruled that these features had minimal impact on the overall appearance and did not create a distinctive visual effect. When an ordinary consumer purchases or uses the product, the visual differences between theD’010 Patent and the cited reference are not significant. Additionally, in this case the overall visual effect of the design cannot create a distinctive visual effect from the prior art, thus lacking non-obviousness. The trend that this judgment implies is noteworthy.
