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.”