The Relationship between the Metaverse and Design Patents in Taiwan (Part III) - How the Metaverse design patent application would be examined?

[ February 22, 2023 ] >Back
Further to our previous article regarding whether a Metaverse design patent can be filed and how to apply the Metaverse design patent application, this article now provides a brief concept about how the Metaverse design patent application would be examined in Taiwan according to the TIPO's report.

Part III - How the Metaverse design patent application would be examined?

In accordance with the Taiwan Patent Act, the following requirements of patentability should be considered for a design patent including: Industrial Applicability, Novelty, and Creativeness. The examination of novelty and creativeness needs to be realized by searching the prior art, also applied to the examination of Metaverse design patents.

1. Novelty
Taiwan Patent Act 122(1) stipulates that the applied for design is lack of novelty if an identical or similar design was disclosed in a printed publication, was publicly exploited, or was known to the public prior to the filing of the application.

Please refer to below table. Identical design refers to “identical appearance applied to the same item”; similar design refers to “identical appearance applied to similar item”, “similar appearance applied to the same item”, and “similar appearance applied to similar item”.

As to the determination whether the items are identical or similar, the actual using situation of ordinary consumers should be simulated. The production, marketing, and purchasing conditions of products and the similarity of purpose and function of items should also be considered.

The item applied for digital design will be recognized as “computer program product” in Taiwan. If someone transfers the appearance of “a car” to “a virtual car in Metaverse” and applies for “image of computer program product”, since the “car” and the “computer program product” are the items that have different purposes and are not similar, the “car” cannot be a novelty citation for the “virtual car”.

2. Creativeness
The creativeness examination is based on those with ordinary knowledge in the analogous art to which the article belongs, and with reference to the ordinary knowledge at the time of filing, and the prior art can be applied for a patent by simple design methods such as imitation, diversion, replacement, and combination. If the design does not provide special visual effects, it should be considered as a design that is easy to think about, thus lacks the creativeness.

For example, according to the Taiwan examination guidelines, it considers that transferring/converting the appearance of the car in Figure 2 to a toy car, which is a simple conversion and easy for thinking, thus still lacks creativeness.

If the applicant applies to TIPO for the above three types of metaverse design patents (virtual space, virtual items, and human-machine interface), there is a high probability that someone will transfer/convert the interior design or appearance of objects in the physical world to computer program products in the judgment of creativeness.

However, as with the aforementioned concept of converting a “car” to a “toy car”, for those with ordinary knowledge in the art, changing the appearance of the physical world to the virtual world should be common (such as converting Formula 1 switched to video racing games). Therefore, if someone transfers the same "car" appearance to the "virtual car" of the Metaverse, and applies for the "image of computer program product", the "car" should be served as the non-creativeness citation for the “virtual car”.