Growing interest in “metaverse” related technologies has sparked debate on how to protect related inventions and designs through patents. On June 14, 2022, TIPO (Taiwan Intellectual Property Office) published an article titled “Relationship between the Metaverse and Design Patents” (link: https://www.tipo.gov.tw/tw/cp-85-910395-b3a07-1.html), which will serve as a reference for the Metaverse industry to improve its patent portfolio to protect its creative work. The content of the article is summarized as follows.
(1) Are Metaverse-related creations eligible for design patent protection?
The metaverse consists of “hardware devices” (such as VR glasses) and “virtual digital designs” (such as images viewed through VR glasses). With regard to virtual image designs, “image designs” were added to the scope of design patents due to the revision of the Patent Act in 2011. Additionally, his 2020 amendments to the Patent Examination Guidelines allow applicants to further extend articles embodying graphic image designs to cover “computer program products.”
Under current patent law and Taiwanese patent practice, the creators of the Metaverse may file design patent applications for the designs of the “virtual images” and the appearance of the “hardware devices” that embody those virtual images. I can do it.
(2) Metaverse Design Patent Application and Examination
Metaverse “virtual images” generally include “virtual space,” “virtual objects,” or “human-machine interfaces.” The design of the “virtual space” may be presented according to the drawing method of the interior design patent. A “virtual article” design may be presented in accordance with the drafting method of a design patent application for an article. The design of the “human-machine interface” can be presented according to the drawing method of graphical user interfaces in graphic image design.
Since the metaverse design of “virtual space” and “virtual article” belongs to the category of virtual design, the applicant must designate the article embodying the design as a “computer program product” rather than a physical article.
Examination criteria for Metaverse designs are stipulated in the Patent Law and Patent Examination Guidelines. During the examination of the creativity of a “virtual image” design, the applicant encountered a situation in which TIPO cited as prior art a reference that disclosed the same or similar appearance of a physical article and denied the creativity of the “virtual image” design. There is likely to be. The “virtual image” design of the claimed “computer program product” is the adoption of the appearance of the physical article.
(3) patent right for Metaverse design
Design infringement is established if (1) the allegedly infringing article is identical or similar to the article to which the design is applied, or (2) the accused article is identical or similar in appearance. is needed. Until then of the design patent. According to the 2016 edition of the “Patent Infringement Guidelines Evaluation Guidelines,” the entity that determines whether the goods are the same or similar and the appearance is the same or similar is the same or similar “general consumers.” Subject matter for determining whether a design patent application is novel.
A physical article and a computer program product are neither the same nor similar, so the design of the physical article claims the same or a similar design and is an eligible anticipation of a patent application directed to a “computer program product.” It is not prior art. Similarly, when filing a design application for the appearance of a “physical article,” the applicant must ensure that the patent rights in the design application, once granted, cannot extend to a “computer program product” having the same or similar appearance. should be noted. In “Physical Articles”.
Therefore, if an applicant wishes to prevent a third party from applying a design identical or similar to a “product” to a “computer program product,” it is desirable to file an additional design application for an “image design.” ” as a “computer program product” to obtain full design protection.
(Four) Proposal for Patent Portfolio of Metaverse-Related Designs
In addition to filing a design patent application for the design of a physical item to prevent misuse by third parties, the designer of the physical item may create a “virtual graphic image” (e.g. Non-Fungible Tokens, NFTs). ) should also be considered the risk of plagiarism by the creator or seller. ). Therefore, when filing a design patent application for a physical article, it may be prudent to simultaneously file a “graphic image design” patent application designated as a “computer program product.” This allows designers to obtain design patent protection for both “physical” and “virtual” designs.