Design patents are a valuable yet often overlooked form of IP protection that can play a role in a company's business strategy. Design patents are often used in industries where the aesthetic qualities of a product can enhance the brand and create customer loyalty. Apple's sophisticated and aggressive design patenting strategy covering iPhones and iPads is one such example.
For a design patent application, the Chinese Patent Office will grant a patent right after a preliminary examination in which no search for prior designs or conflicting applications is conducted. Some of the issues that can come up when prosecuting an application for design are examined below.
According to the third amendment to the Chinese Patent Law, effective October 1 2009, (Patent Law), Article 59.2, a brief explanation is required in a Chinese design patent. The law also provides that the protection scope of the patent right for a design is determined by the product design as shown in the drawings or photographs, while the brief explanation may be used to interpret the design shown. Moreover, Rule 28 of the Implementing Regulations of the Patent Law, effective February 1 2010, specifies that the brief explanation is to indicate the essential feature of the design, among other information.
A general principle of overall observation and comprehensive judgment has been laid out in both the Guidelines for Patent Examination 2010, effective February 1 2010, (Examination Guidelines) and the Interpretations of the Supreme People's Court Concerning Certain Issues on the Application of Law for the Trials of Cases on Disputes over Patent Infringement, effective January 1, 2010 (Judicial Interpretations) in the event of comparing the patented design with a prior design or an accused infringing product. However, it is unclear how the courts would use the brief explanation, particularly the described essential feature, to determine patentability or infringement, while the Judicial Interpretations do specify the importance of the distinctive design feature – distinctive from the prior designs – of a patented design in Article 11. Most practitioners draft the brief explanation to broadly define the design to be patented.
The Patent Law in Article 31.2 provides, in part, that two or more similar designs for the same product or two or more similar designs incorporated in products belonging to the same class and sold or used in sets – individually and collectively similar designs – may be filed as one application; this is intended to address the issue of similar designs for the same application being precluded from patent protection.
Similar designs, by definition, refer to those "normally through overall observation, if the other designs and the main design have same or similar design features, and if the difference between them lies in slight changes in some fine details, usual design of this category of the products, the repeated and continuous arrangement of a design unit or mere change of colour element" as outlined in the Examination Guidelines, Part I, Chapter 3, Section 9.1.2.
Specifically, the Examination Guidelines arbitrarily limit the number of similar designs that can be claimed in one application to 10. Unlike in the US where a type of multiple embodiment claiming with liberal dotted line practice is allowed, if an applicant tries to capture embodiments beyond 10 designs in another application in China, one or both of the applications could be rejected for double patenting. For this reason, patent applicants are advised to carefully choose representatives of concept and claim similar designs that are indistinct in terms of patents in order to provide increased protection scopes.
Once an invalidation is asserted on a prior design basis, each of the claimed similar designs will be judged on its own merit and only the invalidated embodiment will fail.
Design patent applicants often choose to present reference views such as reference views of state in use in an application. These, according to the Part I, Chapter 3, Section 4.2 of the Examination Guidelines, are usually used to facilitate the understanding of "purpose of use, method of use, or place of use". Simply based upon the function of the reference views, it could be understood that the protection scope for a patented design should exclude those reference views. However, neither Article 59.2 of the Patent Law nor Rule 27.2 of the Implementing Regulations explicitly excludes the reference views from patent protection scopes.
Recent court decisions indicate that the reference views of state in use are excluded from patent protection scopes when determining the extent of protection scope, at least in some circumstances. One example case is an examination decision on a request for invalidation of a sofa bed (puzzle) design patent made by the Patent Reexamination Board. The Patent Reexamination Board considered that the protection scope of a product incorporating a design with variations was determined by views with the title of front view, back view, left view, right view, top view and/or bottom view, but not by reference views of state in use, and declared the patented design invalid in whole (examination decision no 8896).
On appeal, the Intermediate People's Court upheld the Patent Reexamination Board's decision of invalidity of a design patent (2007, Beijing First Intermediate People's Court Administrative Case no 97). Specifically, the Court held that reference views of state in use for a product classification purpose should not be considered for the patent scope determination, and are excluded from any comparison with a prior design. The Court reasoned that instead of the reference views of state in use, the patent owner has an option to, but failed, to choose views of state in use, which are used to define the protection scope and can be included in the comparison with the prior design, to protect variable states of a product and establish advantageous aspects that differ from the previous design.
On appeal, the High People's Court affirmed the Intermediate People's Court judgment (2008, Beijing High People's Court Administrative Case no 10), but further stated that the provisions concerning reference views of state in use in the Examination Guidelines include the functions of determining the protection scope of a patented design and illustrating the protected object, and therefore do not violate the Patent Law and the Implementing Regulations.
Nevertheless, since none of the Patent Law, the Implementing Regulations and the Examination Guidelines provide a clear definition for reference views, its legal status needs to be clarified further when the term reference views is interpreted to include the functions of determining the protection scope of the patented design and illustrating the protected object.
Patent applicants are advised to carefully choose and use reference views in a design patent, in view of the Chinese patent practice.
States of variation
Views of state of variation are also used for some products with different states when on sale and in use. Part IV, Chapter 5, Section 5.2 of the Examination Guidelines states that every view of a comparative design may be used when it is compared with a patented design, while for a patented design, its state of use should be taken only to compare it with a comparative design and a determination should be from various states of use taking comprehensive consideration into account. In contrast to the above section on reference – views of state in use – here, the using-state views will be taken as the sole source for determining the patentability, while the only difference is the former being titled as reference views. In the above sofa bed case, the Intermediate People's Court further considered that while reference views of state in use may include other shapes, patterns or colours outside the protection scope of patented design, views of state in use will not include any design aspects outside the protection scope of patented design. Accordingly, the Court concluded that if both have the same function, it would create confusion in the preliminary examination. In this respect, the choice of titles of views may have an impact to the right-affirmation and enforcement of the Chinese design patents.
Views of state of variation or views of state in use should be submitted when the design shown in the views for illustrating variable states is the product per se shown in hexahedral views and space diagram – three-dimensional view – such that the variable states of the product are claimed for protection.
As a design patent is granted without substantive examination, its validity will be challenged by an invalidation proceeding. Under Article 23 of the Patent Law, grounds for challenging include lack of novelty or inventiveness and conflict with a prior right.
The ordinary consumer
In deciding the novelty or inventiveness of a patented design against a prior design, Part IV, Chapter 5, Section 4 of the Examination Guidelines requests that the comparison and judgment shall be made according to the knowledge and cognitive capability of an ordinary consumer. In the absence of a clear definition for the ordinary consumer, recent Supreme People's Court cases shed some light on what capability such a hypothetical person should have, almost reaching the level of an ordinary designer.
In Honda v the Patent Reexamination Board (2010, Supreme People's Court Administrative Case no 3) and Zhejiang Jinfei Machinery Group Co Ltd v Zhejiang Wanfeng Motorcycle Wheel Co Ltd (2010, Supreme People's Court Administrative Case no 5), the Supreme People's Court found that an ordinary consumer, in addition to looking at the design from overall appearance, is capable of knowing the common means of design, the design trend, the material and function limitations, as well as relevant technology and existing designs, and is able to look at individual portions of the design. Specifically, the Court considered knowledge in the art, that is, what the state of the art in the field of the product offers, meaning what has been left for an innovative design given the limitations of product functionality, technology development, and existing designs, i.e., freedom of design. Further, according to the Supreme People's Court cases, an ordinary consumer would understand the design room – freedom of design – for one particular product, and accordingly make a determination on the similarity between designs.
In the Honda case, the Supreme People's Court confirmed the general principle of overall observation and comprehensive judgment, and further considered the knowledge of the design room – freedom of design – understood by an ordinary consumer. The Court reasoned that when cars in certain categories adopt designs that have or appear to be a common configuration as a whole, this will have a limited impact on the overall visual effect. Instead, distinctions in sectional design features such as the design of headlights, lateral view, and back view, do add a notable visual effect on the design of the car as a whole. Relying on this reasoning, it finally ruled that the existence of differences in the design of features such as headlamps and side door windows had led an ordinary consumer to distinguish the patented design from prior art. As a result, the challenged design patent remains valid.
The above opinion will no doubt influence the determination of future similar cases. However, as a question of fact, the outcome of comparison will depend on the evidence presented in each case.
Under Article 23 of the Patent Law, design patents are subject to an inventiveness requirement. A combined design does not meet the requirement if the "combination, including mosaic and replacement, produces a design by merely aggregating two or more designs or design features, or replacing the design feature of one design with another design feature" according to Part IV, Chapter 5 Section 6.2.3. While some details on what teachings and motivations are needed for this lack-of-inventiveness design are provided, unique visual effect would be an effective showing of inventiveness.
A design appears to be identical or substantially identical to the patented design in the eye of the ordinary consumer for it to be accused of infringement. The Judicial Interpretations specify that the comparison is to be made by an ordinary consumer. Further, when determining whether a design is substantially identical, the ordinary consumer must make a comprehensive judgment, based on the design feature(s) of each design, in view of the overall visual effect of the design. Nevertheless, the Judicial Interpretations are silent on what should be considered when making a comprehensive judgment of the overall visual effect.
As described above in the Honda case, the Supreme People's Court confirmed the general principle of overall observation and comprehensive judgment, which is also applicable to infringement cases. Moreover, Article 11 of the Judicial Interpretations introduces the distinctive design feature – distinctive from the prior designs – of a patented design which is different from the key part of the design that has been in practice for years. Without any case under the distinctive design feature test, it seems that the Supreme People's Court would like to limit the judges' discretion on the key part of the design test, where a judge would have a broad discretion interpreting the key part(s). For example, in an earlier case, Fiat Auto SpA v Great Wall Motor Co Ltd (2007), the court paid more attention to the front and rear parts of the vehicle where, according to the court, the key parts most general consumers are usually concerned with are located and because of the differences in these parts, no infringement was found.
Under the Patent Law, the infringement of a design patent includes making, offering for sale, selling or importing a product incorporating the patented design for production or business purpose, while using the product does not constitute infringement.
In conclusion, the third amendment to the Patent Law has brought changes in the standards of granting design patents, and as such, many new issues regarding design patent prosecution and enforcement are emerging.
Qinghong Xu is a partner of Lung Tin, where she focuses on all aspects of IP matters, ranging from patent application preparation and prosecution, patent invalidation and litigation, to technology transfers, licences, strategic alliances, R&D and commercialisation collaborations. Xu also has advised clients on regulatory matters especially those before the Chinese State Food and Drug Administration.
Before joining Lung Tin, Xu was a patent attorney with a New York general practice firm and a patent agent with an IP boutique. Her practice was in IP law and focused on providing patent opinions and strategic patent counselling, and also on patent application preparation and prosecution, licensing and IP litigation.
Xu is admitted to practice before the District of New Jersey and the New York and New Jersey State courts and registered to practise before the USPTO. Xu obtained her BS in organic chemistry from Peking University, a PhD in chemistry from the University of Minnesota, and a JD from New York Law School.
Yan Huang is a patent attorney at Lung Tin and the manager of the firm’s German and English mechanical department. She focuses on patent matters in mechanics, engineering and computers with expertise in home appliance, engineering mechanics, automation manufacturing, semiconductors, printing facilities, medical equipment and computers. Huang is experienced in patent application preparation and prosecution, patent invalidation, litigation and patent searches. She has represented many multinational corporations in Europe and North America and handled numerous patent prosecution cases. Huang also provides patent opinions and strategic patent counselling to clients.
Before joining Lung Tin in 2002, Huang worked with a printing machinery company as a mechanical engineer. Her working languages are English and German.
Huang is a Chinese patent attorney and a member of All China Patent Attorney Association. She obtained her BS in mechanical engineering and industrial automation from Shanghai Tongji University.