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.