Date: 22 September 2025

【Volume 158】

The Patent Act confers upon patentees exclusive rights for the purpose of fostering technological innovation and advancement. In order to safeguard the public’s incentive and opportunity to further develop existing technologies, the Act expressly stipulates novelty as an essential prerequisite for the grant of design patent rights. Accordingly, the design subject to a patent application must be unprecedented and not identical or substantially similar to any element of the prior art, thereby ensuring the sustained progress of technological development.

This article undertakes a comparative analysis of the standards for determining novelty in design patents in Taiwan, Japan, and the United States. Through the examination of selected judicial precedents and case studies, it seeks to elucidate the respective approaches adopted in these jurisdictions and to provide guidance for design patent applicants in formulating effective filing strategies within the framework of globalized intellectual property protection.

Determination of Novelty in Taiwan

i. Legal basis: pursuant to Paragraph 1, Article 122 of the Taiwan Patent Act, only designs that have not been disclosed in printed publications, publicly exploited, or otherwise known to the public (prior to the filing of the patent application) may be granted design patents.

ii. Subject of determination: the “ordinary consumer” is a hypothetical person with general knowledge and awareness, reasonably familiar with the article. Such a person is not an expert or a professional designer in the technical field to which the design belongs. For example, the ordinary consumer of daily necessities is the general public, whereas the ordinary consumer of medical equipment would be hospital procurement personnel or physicians.

iii. Determination of novelty: If an identical or similar appearance is applied to an identical or similar article, the design shall be deemed to lack novelty.

1. Method for determining the article:

The determination focuses on whether the ‘use and function’ are identical or similar. In making this determination, the actual circumstances of an ordinary consumer’s use of the article should be taken into account, together with the conditions of production, marketing, and selection of the goods

2. Method for determining the appearance:

The core concept is overall observation, direct visual comparison, and comprehensive judgment, taking into account the design features, visual focal points, and design variations in appearance.

Among these, the so-called “visual focal point” is determined in accordance with the 2022 XingZhuanSuZi No. 69 Judgment by Intellectual Property and Commercial Court (IPCC), which held: “As the article to which the disputed patent is applied is ‘eyeglasses,’ an item commonly used by ordinary consumers, the front view of the frame, the left and right side views, the rear view, and the top view all constitute visual focal points of portions readily visible when purchasing or using such articles. Variations in the shape design of the side and rear portions of the eyeglass frame occupy a significant part of the overall visual focal points, particularly at the hinge area where the side of the frame connects to the temple and at the central nose pad portion on the rear side of the frame. These are visual focal points in the overall observation, with the hinge area between the frame and the temple occupying an even greater visual prominence than the tail end of the temple. (The design of the tail end of the temple may be obscured by hair or ears when worn and thus not readily visible). The nose pad portion occupies a greater visual focal position than the inner side of the temple and should therefore be given greater evaluative weight….” It is thus evident that, in determining differences between the design patent and the cited design, the identified “visual focal points” should place greater weight on those portions that are readily visible to ordinary consumers when purchasing or using the article.

The disputed design patent

The cited design patent

Determination of Novelty in Japan

i. Legal basis: pursuant to Paragraph 1, Article 3 of the Design Act, a design that has become publicly known or published in Japan or a foreign country prior to filing of the application, or has been made publicly available through the Internet, shall be deemed to have lost novelty.

ii. Subject of determination: where required, the concept also encompasses potential consumers and traders. Transaction refers to the act of exchange between buyers and sellers involving goods or services of value.

iii. Determination of novelty:

1. Determination of identity or similarity of article and the like:

To determine whether the applied-for design and a publicly known design are identical or similar in use and function, factors such as the purpose and conditions of use of the article must be taken into consideration.

2. Method for determining appearance and form:

(1) based on visual observation with the naked eye, and determined in light of the ordinary manner in which the relevant article of the design is used or viewed.

(2) identifying the fundamental configuration aspects and each component form of the applied-for design and the prior art, and determining their similarities and differences.

Among these, the evaluation of similarities and differences focuses on identifying the portions that attract attention during comparative observation, assessing the degree of such attention (e.g., relative area, size differences, internal evaluation, etc.), as well as comparing with the group of prior designs.

The following sets forth a case in Japan where the novelty was affirmed on the ground that the designs were not considered similar. The reason was that the known design’s intended use and function was “to select one from among multiple options and to display such information,” whereas the applied-for design’s intended use and function was “to display information on the stock quantity of a certain product.” Since the two differed in the intended use and function of the articles, they were held not to be similar.Among these, the evaluation of similarities and differences focuses on identifying the elements that attract attention during comparative observation, assessing the degree of such attention (e.g., relative area, size differences, internal evaluation, etc.), and comparing them with the corpus of prior designs.

The following presents a case in Japan where novelty was affirmed on the ground that the designs were not considered similar. The prior art’s intended use and function was “to select one from among multiple options and to display such information,” whereas the application’s  intended use and function was “to display information on the stock quantity of a certain product.” Because the intended use and function of the articles differed, the designs were held not to be similar.

The prior art                             The application

Determination of Novelty in the United States

i. Legal basis: pursuant to Section 171, Paragraph 2 of the United States Patent Act, which provides that the provisions of Section 102 on novelty shall apply accordingly, a design for which the claimed design must not, prior to the filing of the application, have been in public use, on sale, described in a printed publication, or otherwise known to the public.

ii. Subject of determination: “ordinary observer” does not require any degree of specialized technical knowledge, but only a reasonable familiarity with the relevant field of products, and refers to a consumer with ordinary perceptive ability.

iii. Determination of novelty:

1. Determination of the article:

The principal distinction among the United States, Taiwan and Japan lies in the fact that, under U.S. law, the actual “use of an article is irrelevant to the patentability of its design.” If the prior art discloses any article that is substantially identical in appearance to the applicant’s design, the intended use of the article is of no consequence.

For example, where the prior art relates to an “automobile” and the application concerns a “toy automobile,” the difference in use does not affect the determination of novelty. Accordingly, the two are deemed similar, and the claimed design lacks novelty.

          The prior art                               The application

2. Method of determining the appearance:

The United States Manual of Patent Examining Procedure (MPEP) Section 1504.02 sets forth the following principal explanations regarding novelty:

(1) Substantial identity

The concept that all essential features must be the same explains that anticipation equates to lack of novelty, meaning that the claimed design and the prior art must be substantially the same.

(2) Overall observation; differences must be obvious

In applying the ordinary observer test, "determine whether the deception that arises is a result of the similarities in the overall design, not of similarities in ornamental features in isolation."
The mandated overall comparison is a comparison taking into account significant differences between the two designs, not minor or trivial differences that necessarily exist between any two designs that are not exact copies of one another.

(3) No consideration of functional or hidden features

Those features of the design which are functional and/or hidden during end use may not be relied upon to support patentability.