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.