The Metaverse is all the latest buzz, and in the field of intellectual property, there are increasing discussions on its relationship to trademarks and copyrights as infringements have already occurred. In light of the fact that there are very few cases of Metaverse-related design patent applications filed both domestic and abroad, as well as a conspicuous lack of academic journals, adjudications, and media reports on the subject, TIPO decided to compile a report on the matter for public reference.
TIPO’s report covers whether a Metaverse design patent can be filed, how the application would be examined, and the validity of such a patent (Mandarin). Jaw-Hwa now provides a brief English version of TIPO’s report for reference.
Part I: Whether a Metaverse design patent can be filed?
Despite the concept of Metaverse is still abstract, generally, it must be composed of two key elements: one is hardware, including electrical semiconductors and information devices; the other one is a virtual world constructed by software containing many elements with digital designs.
According to the Patent Act in Taiwan, the definition of “Design” stipulates that the creation made in respect of the shape, pattern, color, or any combination thereof, of an article as a whole or in part by visual appeal. In the past, the aforesaid “article” must be a physical object occupying a certain physical space in the physical world. Namely, the appearance of hardware (such as VR glasses) is an eligible subject matter of a design patent. Prior to the amendments to the Patent Act, the subject matter without a “physical or tangible object” such as laser animation, computer animation, and computer font shall not be deemed as eligible for a design patent due to lack of “article nature”. Nevertheless, in order to meet the industrial policies and international design protection trends, the subject matter of a design patent has been expanded to graphicdesign after the amendments to the Taiwan Patent Act in 2011.
It is worth noting that the trends of design patent reform in various countries will be inseparable from human display technology, considering the design patent only protects the appearance that “can be visually seen”. Taking an example for the amendments of the Taiwan Patent Act in 2011, the screen is the dominant hardware for displaying graphic image design, TIPO then regulated that the graphicdesign must be applied to a physical product such as a “display” or “screen”. With the development of display technology, the Hologram technology for projecting graphic designs will be a major development in the field which moves toward a goal that miniaturizes the hardware devices. Accordingly, on a basis that digital design originated from the “Computer program product”, TIPO further amended the Patent Examination Guidelines in 2020, to include the products on which graphic design applied to the “Computer program product”. However, this amendment does not mean that the design patent will protect a “computer program work” defined in paragraph 1 of Article 5 of the Copyright Act. Instead, the protection of the design patent still focuses on the visual appearance implemented by the computer program such as the computer generated icon (CGI) and graphical user interface (GUI).
In conclusion, according to the current practice,no matter the appearance of hardware or digital design that display Metaverse as long as the appearance of the article (including computer program product) can be manufactured industrially or by hand, it would be an eligible subject matter for a design patent in Taiwan.