An International Guide to
Patent Case Management for Judges

4.8 Design patents

Article 2 of the Patent Law stipulates that

“Invention-creations,” as used in this Law, refers to inventions, utility models, and designs.

[…]

“Design” means, with respect to an overall or partial product, any new design of the shape, the pattern, or the combination, or their combination of the color with shape or pattern, which is rich in aesthetic appeal and is fit for industrial application.

Thus, the overall or partial design of a product may be protected by a patent right, according to law.

4.8.1 Main features of design patents

Although design, invention and utility model patents are stipulated in the Patent Law as possessing common characteristics, the design patent has several unique characteristics. First, a design patent protects “a new design, which creates an aesthetic appeal and is fit for industrial application.” This differs from the “technical solution” protected by invention and utility model patents. Consequently, there are differences between design patents and invention and utility model patents in terms of the subject of evaluation, grant and confirmation criteria, protection scope, infringement judgment, acts of infringement, terms of protection and so on. Second, a design cannot exist alone without the corresponding product. The category of this product also has an important impact on the determination of protection scope, the grant and confirmation of design patents and determinations of infringement. Third, a design protected in accordance with the Patent Law includes both the overall and partial design of the product.

Provisions regarding partial designs were added to the fourth amendment of the Patent Law in 2020. All cases described in the following sections were decided before this amendment – thus, they concern only the overall designs of products. Fourth, the elements of a design include shapes, patterns or the combination thereof, as well as the combination of colors, shapes and patterns. Colors cannot be protected by design alone. Fifth, design patents are not subject to a substantive examination but only to a preliminary examination before they are granted. Finally, in addition to the Patent Law, product designs can also be protected like other types of intellectual property rights in accordance with the Copyright Law,¹⁶⁶ the Law on Anti-unfair Competition,¹⁶⁷ and other relevant laws and regulations.

4.8.2 Grant and confirmation procedures for design patents

4.8.2.1 Grant procedures and administrative cases

The application for a design patent is not subject to a substantive examination but only to a preliminary examination before the patent is granted. A preliminary examination includes:

• a formal examination of application documents;
• an examination of obvious substantive defects in the application documents (Article 44 of the Rules for the Implementation of the Patent Law);
• a formal examination of other related documents; and
• an examination of related costs.

Where it is found, after the preliminary examination, that there is no reason to reject the application, the patent administration department of the State Council will decide whether to grant a design patent right. After the applicant has made, supplemented or rectified the statements of opinion, the patent administration department will consider whether the application for the design patent conforms with the Patent Law and the Rules for the Implementation of the Patent Law. If not, the application will be rejected.

If the applicant is not satisfied with the rejection decision, they may file a reexamination request with the CNIPA. If the applicant is still not satisfied with the reexamination decision, the applicant may bring an administrative lawsuit (i.e., an administrative case involving the grant of the design patent) to the Beijing Intellectual Property Court, according to law.

4.8.2.2 Invalidation declaration and confirmation procedures and administrative cases

According to Articles 45–46 of the Patent Law, any entity or individual can request the patent administration department of the State Council to declare a design patent right invalid. If the entity or individual is not satisfied with the decision of the patent administration department, they may bring a lawsuit to the people’s court within three months from the date of receiving the notice. The people’s court will notify the person who is the opponent party in the invalidation procedure to participate in the litigation as a third party.

Reasons for requesting invalidation of a design patent right include that the patent:

• does not conform with Article 2 of the Patent Law regarding the object of protection of the design patent;
• does not conform with Article 23 of the Patent Law, which provides that the design patent must not be part of a prior design or have a conflicting design, that it is significantly different from prior designs or the combination of prior design features, and that there is no conflict of rights;
• does not conform with Article 27 paragraph 2 of the Patent Law, which specifies that the relevant drawings or photographs submitted by the applicant must clearly indicate the design of the product for which patent protection is sought;
• does not conform with Article 33 of the Patent Law, which specifies that amendments to design patent application documents must not go beyond the scope of the disclosure as shown in the original drawings or photographs;
• does not conform with Article 43 paragraph 1 of the Rules for the Implementation of the Patent Law, which specifies that divisional applications must not go beyond the scope of the disclosure in the original application;
• falls within the scope of Article 5 of the Patent Law, which specifies that no patent right will be granted for any invention-creation that violates laws or social morality or that is detrimental to the public interests;
• falls within the scope of Article 25(6) of the Patent Law, which specifies that no patent right will be granted for “designs of two-dimensional printing goods, made of the pattern, the color or the combination of the two, which serve mainly as indicators”; and
• does not conform with Article 9 of the Patent Law, which prohibits double patenting.

4.8.3 Ordinary consumers

A design patent does not protect the technical solution but the innovation of the visual effect in product design. Therefore, the grant, confirmation or infringement of a design patent is determined based on ordinary consumers’ understanding of the design product. In this respect, Article 10 of the Interpretation of Patent Infringement Dispute Cases stipulates the following: “The people’s court shall determine whether designs are identical or similar based on ordinary consumers’ knowledge level and cognitive ability as to a product having a design patent.” Articles 14–15 and 20 of the Provisions on Patent Grant and Confirmation are all related to ordinary consumers. Each category of products has a specific consumer group, and not all products share the same consumer group; which group constitutes the “ordinary consumers” is determined according to the actual purchase and use of the product.

In an administrative dispute case over the invalidation of design patent rights, Honda Technology Research Industry Co. v. China National Intellectual Property Administration,¹⁶⁸ the Supreme People’s Court held that the term “ordinary consumers” refers to consumers that have a commonsense understanding of the design status of the same or similar categories of design products and have a certain ability to distinguish the shape, pattern and color of the design products. However, such consumers would not notice minor changes in the shape, pattern and color of the products. Consumers having a “commonsense understanding” means that they have the ability to know the design status of relevant products but are not skilled in the design; the term does not mean that they have only an elementary or simple understanding.

Article 14 paragraph 1 of the Provisions on Patent Grant and Confirmation stipulates that, in determining the knowledge level and cognitive ability of ordinary consumers regarding a product with a design patent, the court must consider the design space or the designer’s freedom of creation of the product on the date of application. If the design space is relatively large, the court may determine that it is generally not easy for ordinary consumers to notice minor differences among different designs; if the design space is relatively small, the court may determine that it is generally easy for ordinary consumers to notice minor differences among different designs. This provision is consistent with Article 14 of the Interpretation (II) of Patent Infringement Dispute Cases.

According to Article 14 paragraph 2 of the Provisions on Patent Grant and Confirmation,

[i]n determining the design space provided for in [Article 14 paragraph 1], the people’s court may comprehensively consider the following factors:

1. (1) The function and use of the product;
2. (2) The overall conditions of the prior design;
3. (3) Usual design;
4. (4) Compulsory provisions of laws and administrative regulations;
5. (5) National and industrial technical standards; and
6. (6) Other factors that need to be considered.

In an administrative dispute case over the invalidation of the design patent of Zhejiang Jin Fei Machinery Co. v. Zhejiang Wanfeng Motorcycle Co.,¹⁶⁹ the Supreme People’s Court held that the design freedom of designers in the field of specific products is usually restricted and affected by many factors, such as prior designs, technology, laws and concepts. With the accumulation of prior designs, technological progress, legal changes and conceptual changes, the design space may change. In a patent invalidation declaration procedure, when considering the design space of a design product, the design space at the date of the patent application is applicable.

4.8.4 Protection scope of a design patent

4.8.4.1 Design of the product

According to the provisions in Article 64 paragraph 2 of the Patent Law, “[f]or the patent right for design, the scope of protection shall be confined to the design of the product as shown in the drawings or photographs. The brief description may be used to explain the design of the product as shown in the drawings or photographs.”

The 2008 Patent Law added the requirements that the “brief description to the design shall be submitted when applying for a patent for design” (Article 27 paragraph 1) and that “[t]he relevant drawings or photographs submitted by the applicant shall clearly indicate the design of the product for which patent protection is sought” (Article 27 paragraph 2). Thus, a design patent application requires a request, pictures or photos of the design, a brief description of the design, and other documents. According to Article 15 of the Provisions on Patent Grant and Confirmation, where the pictures or photos of a design are contradictory, missing or vague, making it impossible for ordinary consumers to determine the design to be protected based on such pictures or photos and brief descriptions, the court shall determine that those items fail to comply with the requirement of Article 27 paragraph 2 of the Patent Law that they “clearly indicate the design of the product for which patent protection is sought.”

4.8.4.2 Brief description

With respect to the brief description, Article 28 of the Rules for the Implementation of the Patent Law stipulates the following:

The brief description of a design shall indicate the title and use of the product incorporating the design and the essential feature of the design, and designate a drawing or photograph which best shows the essential feature of the design. Where the view of the product incorporating the design is omitted or where concurrent protection of colors is sought, this shall be indicated in the brief description.

Where an application for a design patent is filed for two or more similar designs incorporated in the same product, one of these designs shall be indicated as the main design in the brief description.

The brief description shall not contain any commercial advertising and shall not be used to indicate the functions of the product.

The reference in paragraph 2 to applications filed for two or more similar designs refers to the provision for the same in Article 31 paragraph 2 of the Patent Law.

In a design patent right infringement dispute case, Beijing Huajiesheng Electromechanical Equipment Co. v. Dingsheng Door Control Technology Co.,¹⁷⁰ the Supreme People’s Court held that the brief description is a document that must be submitted when applying for a design patent and that it plays an explanatory role in determining the scope of protection of the design patent right. If the reference drawing of the use state is not considered, then an obvious conflict with the brief description of the design may occur. Therefore, a people’s court must consider the reference drawing of the use state when determining the protection scope of the design patent right.

4.8.4.3 Product category

A design cannot be independently protected without the presence of the designed product. Therefore, when determining the protection scope of a design patent right, both the design and the category of the product are considered. If only the alleged infringing design is similar or identical to the patented design (i.e., their products are not similar or identical), or only the alleged infringing design’s product is similar or identical to the patented design’s product (i.e., the designs are not similar or identical), then the alleged infringing design does not fall within the scope of protection of the design patent right. Article 8 of the Interpretation of Patent Infringement Dispute Cases stipulates the following:

Where a design identical or similar to a design patent is applied to a category of products identical or similar to the products carrying the design patent, the court shall determine that the alleged infringing design falls into the scope of protection of a design patent right as provided for in paragraph 2 of Article 59 of the Patent Law.¹⁷¹

In an administrative case involving patent grant and confirmation, the court must also consider the product categories of the design and the prior design, in accordance with Article 23 of the Patent Law, when determining whether the design is a prior design, whether there is a conflicting application and whether it is obviously different from the prior design or a combination of prior design features. Articles 17–21 of the Provisions on Patent Grant and Confirmation have corresponding provisions.

According to Article 9 of the Interpretation of Patent Infringement Dispute Cases and Article 17 paragraph 3 of the Provisions on Patent Grant and Confirmation, the court must determine the category of a design product according to the use of the product. To determine the use of a product, the court may refer to the brief description of the design, the international classification for industrial designs, the functions of the product, the sale and real use of the product, and other such factors. With respect to the product category, the applicant must, in accordance with Article 47 of the Rules for the Implementation of the Patent Law, indicate “a product incorporating the design and the class to which that product belongs, [referring] to the classification of products for designs published by the patent administration department of the State Council.”

4.8.5 Identifying “prior design” and “priority date”

Article 23 paragraph 4 of the Patent Law specifies the following: “For the purpose of this Law, ‘a prior design’ refers to any design known to the public domestically and/or abroad before the filing date.” The definition of prior design is consistent with that of “prior art” in Article 22 paragraph 4 of the Patent Law.

With respect to priority rights, according to Article 11 of the Rules for the Implementation of the Patent Law, except for the circumstances provided for in Article 28 (determination of the date of filing) and Article 42 (the term of patent rights) of the 2008 Patent Law, “[t]he date of filing referred to in the Patent Law” means “the priority date where priority is claimed.” A priority right can be a foreign priority right or a domestic priority right, according to whether the first patent application is filed abroad or in China, respectively. China’s 1984 Patent Law only referred to foreign priority (Article 29 of the 1984 Patent Law). In 1992, the Patent Law was amended by adding the domestic priority of inventions and utility models (Article 29 of the 1992 Patent Law). In the fourth amendment to the Patent Law, the domestic priority of design patents was added. It is stipulated in Article 29 paragraph 2 of the Patent Law that priority may be enjoyed if a patent application for the same subject is filed with the patent administration department of the State Council within six months from the date of the first design patent application in China.

The determination of the filing date and priority date has an important impact on a court’s finding of whether a design patent meets the grant and confirmation conditions stipulated in the Patent Law and whether a prior design and prior design defense are established in civil patent infringement cases.

4.8.6 Application of Article 23 of the Patent Law

Article 23 of the Patent Law is the most important legal basis for the grant and confirmation of a design patent. To further increase the requirements for being granted a design patent right and to improve patent quality, the provision in Article 25(1) of the TRIPS Agreement – referring to designs that “do not significantly differ from prior designs or combinations of prior design features” – was incorporated into Article 23 of the Patent Law in 2008. Article 23 paragraphs 1–3 of the Patent Law stipulates that a design for which a patent may be granted

shall not be a prior design, and no entity or individual has filed a patent application for the identical design with the patent administration department of the State Council before the filing date, and the content of the application is disclosed in patent documents announced after the filing date[;]

[…] shall significantly differ from a prior design or the combination of prior design features[; and]

[…] must not conflict with the lawful rights acquired by any other person before the filing date.

Article 23 paragraph 4 of the Patent Law stipulates that the term “prior design” means “any design known to the public domestically and/or abroad before the filing date.”

According to Article 16 of the Provisions on Patent Grant and Confirmation, the people’s court shall, when determining whether a design complies with Article 23 of the Patent Law, “comprehensively judge the overall visual effect of the design.”

4.8.6.1 Identifying a “prior design”

The stipulations that a design “not be a prior design” (Article 23 paragraph 1 of the Patent Law) and that an invention or utility model “not form part of the prior art” (in Article 22 paragraph 2 of the Patent Law) correspond with each other.

Article 17 paragraph 1 of the Provisions on Patent Grant and Confirmation defines a design as being a prior design if “compared with a prior design of any product of a same or similar category, the overall visual effect of a design is identical or substantially identical only with partial and subtle differences.”

4.8.6.2 Identifying a “conflicting application” (conflicting design)

To prevent the same application or different applications for the same design from being successively granted, the notion of conflicting applications (conflicting designs) was added in Article 23 paragraph 1 of the Patent Law: “no entity or individual has filed a patent application for the identical design with the patent administration department of the State Council before the filing date, and the content of the application is disclosed in patent documents announced after the filing date.” “Any entity or individual” also includes the patentee or patent applicant. The provisions on conflicting applications are important for prohibiting double patenting.

Article 19 of the Provisions on Patent Grant and Confirmation further stipulates that an “identical design,” as set out in Article 23 paragraph 1 of the Patent Law, includes

[w]here, in comparison with another design of a product of a same or similar category [and] for which a patent application is filed before the filing date and the content of the application is disclosed in patent documents announced after the filing date, […] the overall visual effect of a design is identical or substantially identical only with partial and subtle differences, among others.

4.8.6.3 Identifying significant differences

To “significantly differ from,” as specified in Article 23 paragraph 2 of the Patent Law, includes two cases. First, the design for which the patent right is granted is significantly different from the prior design (i.e., a separate comparison). Second, the design is significantly different from the combination of prior design features (i.e., comparing the combined design features of the prior design with the patented design). This is similar to the determination of inventiveness for invention and utility model patents.

4.8.6.3.1 Identifying “significant impact”

With respect to separate comparisons between the patented design and a prior design, Article 17 paragraph 2 of the Provisions on Patent Grant and Confirmation stipulates the following:

If the difference between a design and a prior design of a product of a same or similar category has no significant impact on the overall visual effect, the court shall determine that the design has no ‘significant difference’ as provided for in paragraph 2, Article 23 of the Patent Law.

The provision is consistent with the requirement in Article 23 of the 2000 Patent Law that a design “not be similar with or similar to” a prior design. It is also consistent with the criteria with respect to the determination of design patent infringement as stipulated in Article 11 of the Interpretation of Patent Infringement Dispute Cases, which states, “if there is no substantive difference in the overall visual effect between the alleged infringing design and a patented design, the court shall determine that they are similar.”

With respect to the determination of similarity as stipulated in the 2000 Patent Law, in an administrative dispute case over the invalidation of design patent rights, Honda Technology Research Industry Co. v. Patent Reexamination Board,¹⁷² the Supreme People’s Court held that the basic method to determine whether a patented design is identical or similar to a prior design is to observe each design as a whole, based on the knowledge level and cognitive ability of ordinary consumers, and comprehensively determine whether the differences between the two have a significant impact on the visual effect of the product design. The term “as a whole” means that all design features of the visual part of the product should be considered, not just specific parts thereof. “Comprehensive” refers to the combination of all factors affecting the overall visual effect of the product design.

In a case involving an administrative dispute over the invalidation of design patent rights, Gree Electric Appliances, Inc. v. GD Midea Holding Co.,¹⁷³ the Supreme People’s Court further highlighted that an overall observation and comprehensive judgment refers to whether ordinary consumers can determine significant differences in the visual effect between the patented patent and a prior design as a whole, rather than in partial design changes. In such determinations, ordinary consumers will observe the similarities and differences between the visual parts of the patented design and the prior design and comprehensively consider their respective impacts on the overall visual effect.

4.8.6.3.2 Comparing combined prior design features with the design patent

With respect to comparing the combined design features of a prior design with a design patent, Article 20 paragraph 1 of the Provisions on Patent Grant and Confirmation stipulates the following:

Where, based on design motivation from prior designs on the whole, a design with an overall visual effect identical or substantially identical only with partial and subtle differences, among others, with a design patent, and without unique visual effect is obtained through the conversion, combination, or replacement of design features, which ordinary consumers can easily think of, the people’s court shall determine that the design patent has “no significant difference” as provided for in paragraph 2, Article 23 of the Patent Law in comparison with the combination of prior design features.

This provision refers to the relevant provisions and experiences in the determination of inventiveness for invention and utility model patents. First, it draws lessons from the concept of “technical motivation” in determining inventiveness, giving the provision on “design motivation.” The overall conditions of a prior design can be comprehensively considered, and the determination can be made according to the design motivation provided by the prior design as a whole. This makes the determination criteria more objective. Second, ordinary consumers are in the position to make the determination – not the designers of the product – to avoid determining the legitimacy of a design patent based on a different subject. Third, the key to determining whether a design patent has any “significant difference” is to find out whether its overall visual effect is easy to think of. That is, according to the prior design, whether it is easy to think of obtaining an identical or substantially identical overall visual effect (only with partial and subtle differences) through conventional design methods, including through the conversion, combination or replacement of design features. Fourth, the factor of “unexpected technical effects,” considered in determining inventiveness, is used as a reference, and it is necessary to consider whether a design patent has a “unique visual effect.” Article 20 paragraph 2 of the Provisions on Patent Grant and Confirmation lists seven circumstances wherein “design motivation” may be found, and Article 21 stipulates the factors to be fully considered in determining the “unique visual effect.”

4.8.6.3.3 “Aesthetic appeal” and functional design features

Article 2 paragraph 4 of the Patent Law stipulates that “‘[d]esign’ means, with respect to an overall or partial product, any new design of the shape, the pattern, or their combination, or the combination of the color with shape or pattern, which is rich in an aesthetic appeal and is fit for industrial application.” With respect to the “aesthetic appeal” required for a design, it is not about whether the product aesthetically looks good, but about whether the visual effect of the product is “decorative,” which is a concept relative to functionality. Article 16 paragraph 2 of the Provisions on Patent Grant and Confirmation stipulates the following: “Design features required for realizing particular technical function or only with limited choices shall have no significant impact on the overall observation and comprehensive judgment of the visual effect of a patent for a design.”

In a dispute over the infringement of design patent rights, Friedrich Grohe AG v. Zhejiang Jianlong Sanitary Ware Co.,¹⁷⁴ it was pointed out that the identification of functional design features depends on whether the feature, in the opinion of ordinary consumers of the design product, is solely determined by the specific function, without considering whether the feature has aesthetic appeal. Functional design features have no significant impact on the overall visual effect of the design. When it comes to the impact of design features with both functionality and decorativeness on the overall visual effect, its degree of decorativeness shall be considered; the stronger the decorativeness, the greater the impact on the overall visual effect, and vice versa.

In a case involving an administrative dispute over the invalidation of design patent rights, Gree Electric Appliances, Inc. v. GD Midea Holding Co.,¹⁷⁵ the Supreme People’s Court pointed out that, to obtain the protection of a design patent right, the design must have aesthetic appeal as set out in the Patent Law: that is, on the basis of realizing the specific function of the product, innovative improvements have been made to the visual effect of the product so that the product presents the combination of functionality and aesthetic appeal. A product design with functionality but no aesthetic appeal can be protected by applying for an invention or utility model patent rather than a design patent.

With respect to the identification of functional design features, the Supreme People’s Court pointed out, in a case involving an administrative dispute over the invalidation of design patent rights, China National Intellectual Property Administration v. Zhang Dijun,¹⁷⁶ that functional design features refer to those design features that, in the view of ordinary consumers, are determined solely by the specific function to be realized without considering aesthetic factors. Functional design features are related, to some degree, to the selectivity of the design features. If a design feature is the only design for a specific function, then aesthetic factors are excluded from such a design feature, and the design feature is obviously a functional design feature. If a design feature is one of a limited number of design choices for realizing a specific function, then this firmly shows that the design feature is a kind of functional feature. However, even if a design feature is only one of multiple design methods for realizing a specific function, it can still be considered a functional design feature so long as the design feature is determined only by the specific function to be realized and irrelevant to aesthetic considerations.

4.8.6.3.4 No conflict with lawful rights

The constituent elements of a design include its shape, pattern and color, which may involve a work, business logo, name, portrait and elements protected by lawful rights acquired by another person before the filing date. So long as a design patent is exploited, the prior lawful rights or interests of others might be infringed or damaged. Article 23 paragraph 3 of the Patent Law stipulates the following: “Any design for which a patent right is granted must not conflict with the lawful rights acquired by any other person before the filing date.”

For the determination of the conflict of rights, Article 11 of the Interpretation of Patent Infringement Dispute Cases stipulates that “where a patent infringement case involves any conflict of rights, the people’s court shall protect the lawful rights and interests of the party with a prior right in accordance with the law.” Article 12 stipulates the following: “The lawful rights mentioned in paragraph 3, Article 23 of the Patent Law include the lawful rights or interests in works, trademarks, geographical indications, names, enterprise names, portraits, as well as influential commodity names, packaging, decoration, etc.” These provisions also apply as references in the trial of cases involving patent grant and confirmation.

In a case involving an administrative dispute over the invalidation of design patent rights, China National Intellectual Property Administration v. Baixiang Foods Co.,¹⁷⁷ the Supreme People’s Court held that the right to apply for the registration of a trademark is of great significance in determining whether a design patent right and an exclusive right to use a registered trademark constitute a conflict of rights. As a kind of expected right, the right holder related to a trademark application ultimately seeks the right to exclusively make use of the registered trademark. Only when the trademark is registered can the ultimate interest from the application be realized. In this case, the right to apply for a trademark should be protected retroactively, and the legal significance of the filing date of the trademark application should be recognized. If the trademark application filing date is earlier than the design patent filing date, then the exclusive right to the registered trademark can prevail against the design patent right. Once the trademark has been registered, the exploitation of the design patent will objectively conflict with the trademark rights; therefore, in this case, the court decided in accordance with the principle of protecting prior rights.

4.8.7 Infringement of design patent rights

With respect to the infringement of a design patent right, Article 11 paragraph 2 of the Patent Law stipulates the following: “After the grant of a design patent, no entity or individual may, without the authorization of the patentee, exploit the patent, that is, for production or business purposes, manufacture, offer to sell, sell, or import the product incorporating the patentee’s patented design.” Among the types of acts infringing a design patent, “use” is not included.

According to Article 12 of the Interpretation of Patent Infringement Dispute Cases:

Where a product infringing a design patent right is used as a part or component for manufacturing and selling another product, the people’s court shall determine it as an act of selling as provided for in Article 11 of the Patent Law, unless the product which infringes the design patent only has a technical function in such other product.

The main consideration of this provision is that, when a product that infringes a design patent right is used as a part or component for manufacturing and selling another product, such activity is deemed to be selling, since use alone would not constitute an infringement of the design patent according to the Patent Law. However, because a design patent right protects the appearance of the product, if the part and component only play a technical function without producing any visual effect during the normal use of the final product, then selling infringement shall not be established.

In a case involving a dispute over the infringement of design patent rights, Ou Jieren v. Taizhou Jinshen Household Products Co.,¹⁷⁸ it was recorded in the brief description of the patent, titled “aluminum profile,” that the picture to best indicate the key design elements was the main view, which showed the end face shape of the aluminum profile. The alleged infringing product was a glass sliding door. As a component of the glass sliding door, the aluminum profile was embedded with the glass on the sliding door as a whole, and the end face of the aluminum profile could not be observed under normal use, so the aluminum profile played only a technical function. Therefore, the act of using the aluminum profile as a part in the manufacture and selling of glass sliding doors was judged not to constitute infringement.

4.8.8 Judgment of infringement of design patents

The scope of protection of a design patent is subject to the design shown in the picture or photograph. Article 8 of the Interpretation of Patent Infringement Dispute Cases stipulates the following:

Where a design identical or similar to a design patent is applied to a category of products identical or similar to the products carrying the design patent, the people’s court shall determine that the alleged infringing design falls within the scope of protection of the design patent as provided for in Article 59 paragraph 2 of the [2008] Patent Law.

In the judgment of patent infringement, the people’s court does not only determine whether the design is identical or similar but also determines whether the categories of products are identical or similar. The criteria for determining the product category in a patent infringement case are consistent with those in the procedures involving patent grant and confirmation: both are based on the use of the product.

When determining whether designs are identical or similar, ordinary consumers are the subject to make such a determination, and it is necessary to accurately clarify the knowledge and cognitive ability of these ordinary consumers and carry out the “overall observation” and “comprehensive judgment” of the visual effect of the whole. Article 11 of the Interpretation of Patent Infringement Dispute Cases stipulates the following:

When determining whether designs are identical or similar, the people’s court shall consider the design features of the patented design and the alleged infringing design, and make a comprehensive judgment depending on the overall visual effect of the designs; and the people’s court shall not consider design features mainly determined by technical functions, and material, internal structure, and other features of a product which have no effect on the overall visual effect.

In the following circumstances, the overall visual effect of a design is usually more significantly affected:

1. (1) The part of a product that is easy to be directly observed during normal use t as opposed to other parts;
2. (2) design features that are distinct from those of the prior designs as opposed to other design features of the patented design.

Where there is no difference in the overall visual effect between the alleged infringing design and a patented design, the people’s court shall determine that the two designs are identical; or if there is no substantive difference in the overall visual effect between them, the people’s court shall determine that they are similar.

There are two main considerations for these provisions. First, a design patent protects the improvement and innovation of the visual effect of the product’s appearance rather than the innovation of its function and technical effects. Hence, any material, internal structure or other features of the product that have no impact on the overall visual effect – and any design features determined primarily by a technical function – are not considered in the determination of infringement. Accordingly, the parts of a product that can easily be directly observed during normal use will be more likely to have a significant impact on the visual effect; and, conversely, parts that cannot be observed or are almost impossible to be observed during normal use will not have a significant impact on the overall visual effect. Second, the fundamental criterion for determining whether a design is identical or similar is the overall visual effect, and the design features of the innovative part are an important part affecting the overall visual effect. The features distinct from the prior design are identified based on evidence cross-examined by the parties. Since design patents in China are not substantially examined before granting, the essential features described in the brief description of the design can be used as a reference for finding the innovative part.

In Friedrich Grohe AG v. Zhejiang Jianlong Sanitary Ware Co.,¹⁷⁹ a dispute over the infringement of design patent rights, it was indicated that the design features of a patented design not only reflect the innovative features, which are different from those in prior designs, but also reflect the designer’s inventive contribution to the prior designs. Thus, if an alleged infringing design does not include all of the design features distinguishing the patented design from prior designs, it can be presumed that the alleged infringing design is not similar to the patented design. For the determination of design features, the patentee must present evidence for the design features claimed. Based on hearing the cross-examination opinions of the parties, the court shall fully examine the evidence and determine the design features of the patented design according to the law.

In a case involving a dispute over the infringement of design patent rights, Lanxi Changcheng Food Co. v. Chen Chunbin,¹⁸⁰ the Supreme People’s Court held that the protection scope of the design patent was the shape of the product without claiming the pattern of the design. Although the alleged infringing product used a pattern on the product, this additional pattern did not have a substantive or significant impact on the overall visual effect. Therefore, the alleged infringing product fell within the protection scope of the involved patent.

In a case involving a dispute over the infringement of design patent rights, Arc International v. Yiwu Lanzhiyun Glass Crafts Factory,¹⁸¹ the Supreme People’s Court pointed out that a design protected under Patent Law should be incorporated into products and cannot exist independently. The product category of a design patent should be determined based on the use of the product, which has a form independent of the design and can be sold separately. In a case involving a dispute over the infringement of design patent rights, Fujian Jinjiang Qingyang Weiduoli Food Co. v. Zhangzhou Yueyuan Food Co.,¹⁸² the Supreme People’s Court pointed out that the object to be protected by a design patent is neither the product alone nor the design independent of the product category defined by the design patent. The determination of whether the product category is identical or similar should be based on whether the use of the product is identical or similar. The sale and actual use of a product can be a reference for determining the use of the product.

Articles 15–17 of the Interpretation (II) of Patent Infringement Dispute Cases contain the provisions on the determination of infringement of design patents for combination products, products in a set and products having variable states.

4.8.9 Prior design defense

Article 67 of the Patent Law stipulates the following: “In a dispute over patent infringement, if the alleged infringer has evidence to prove that the technology or design that the alleged infringer has exploited is a prior art or prior design, such exploitation shall not constitute an infringement of the patent right.” With respect to the prior design defense, this provision means that a patentee can apply for a patent and obtain protection only for their innovative contribution relative to the prior design; they are not allowed to include, in the protection scope, designs that have entered the public domain or that belong to the innovative contribution of others. According to Article 14 paragraph 2 of the Interpretation of Patent Infringement Dispute Cases, “[w]here an alleged design is identical to or is not substantively different from a prior design,” a prior design defense shall be sustained.

After the 2008 Patent Law, the geographical scope of public use or publication disclosure was no longer distinguished, and the recognition criteria for prior designs were changed. Article 22 of the Interpretation (II) of Patent Infringement Dispute Cases stipulates the following: “Regarding the prior art defense or prior design defense asserted by an alleged infringer, the people’s courts shall define the prior art or prior design in accordance with the Patent Law that was in effect upon the patent filing date.” Therefore, regarding design patents applied for before the 2008 Patent Law, prior designs must still be determined according to the specific methods of disclosure: a design used abroad cannot constitute a disclosure and cannot be used for prior design defense.

With respect to the judgment criteria for prior design defense, in a case involving a dispute over design patent rights, Bridgestone Corp. v. Zhejiang Huntington Bull Rubber Co.,¹⁸³ the Supreme People’s Court held that, to determine whether an alleged infringer’s prior design defense is sustained, the design of the alleged infringing product must first be compared with a prior design to determine whether they are identical or have no substantive differences. If the design of the alleged infringing product is identical to a prior design, it can be directly determined that the design exploited by the alleged infringer is part of the prior design and does not fall within the protection scope of the design patent. If the design of the alleged infringing product is not identical to the prior design, then it must further be judged whether they are substantively different or similar. The judgment of any substantive difference or similarity is relative. If the design of the alleged infringing product is simply compared with the prior design, the differences between the two and the impacts of these differences on their respective overall visual effects may be ignored, resulting in wrong judgment (i.e., similarities between the alleged infringing product design, prior design and design patent are established). Therefore, where an alleged infringing product design is not identical to the prior design, to ensure an accurate conclusion regarding infringement of the design patent, the prior design is used as the basis for comparison with the alleged infringing product design and design patent before a comprehensive judgment is made. In this process, attention is paid not only to the similarities and differences between the alleged infringing product design and the prior design, as well as their impacts on their respective overall visual effects, but also to the differences between the design patent and the prior design (and their impacts on their respective overall visual effect). Attention is paid to clarifying whether the design of the alleged infringing product takes advantage of the differences between the design patent and the prior design. If so, a determination can be made as to whether there is a substantial difference between the design of the alleged infringing product and the prior design.