On March 21, 2016, China’s Supreme People’s Court issued the Interpretation on Several Issues Concerning the Application of Law in the Trial of Patent Infringement Cases (II) (hereinafter(hereinafter(hereinafter(hereinafter(hereinafter, which has come into force as of April 1, 2016. The Judicial Interpretation (II) is being implemented in an environment where patent infringements continue growing quickly, and many legal issues in patent disputes touch on the kernel of the patent system which shows significant influence on economic development and innovations. The enactment of the Judicial Interpretation (II) is a response to the above status quo and aims at enhancing patent protection in China.

The Judicial Interpretation (II) clarifies several pending legal issues regarding design patent infringement, including the “degree of design freedom,” construction of the protection scope of a patent for designs of products in set, of a patent for design of a complicated product and of a patent for a design with variant states. Although the Supreme People’s Court, when issuing the Judicial Interpretation (II), made an announcement that it would enhance patent protection in China and would balance the interests of rights owners and the public, we are reluctant to say that these aims may not be fully-justified by the Judicial Interpretation (II).

Degree of Design Freedom

Article 14 of the Judicial Interpretation (II) reads: ”When determining the level of knowledge and discriminability of an ordinary consumer to a design, the people’s court shall normally consider the design space of the products in the same or similar category as the patented design at the time of infringement. Where the design space is relatively large, the people’s court may determine that it is usually unlikely for an ordinary consumer to notice the minor differences between the compared designs; where the design space is relatively small, the people’s court may determine that it is usually more likely for an ordinary consumer to notice the minor differences between two compared designs.”

According to Article 8 and Article 11 of the Interpretation on Several Issues Concerning the Application of Law in the Trial of Patent Infringement Cases (I) (hereinafter Judicial Interpretation (I)), the people’s court shall take the “overall visual observation and comprehensive judgment” to decide whether the accused design is identical with or similar to the design patent and therefore infringes the design patent. Pure functional features, materials and internal constructions of the products shall not be considered. Design features that are easily observed in normal use of the products and design features that differ the design patent from prior designs normally weigh more in assessment of infringement.

Article 10 of the Judicial Interpretation (I) further provides that, the subject in deciding whether one design is identical with or similar to the design patent is the ordinary consumer, who is an imaginary man with a level of knowledge and discriminability between the designer and the actual consumers of the product. Under the “overall visual observation and comprehensive judgment” test, the assessment of similarity between the compared designs requires a consideration of the overall visual impression they each create.

In such assessment, it is normally necessary for the court to divide the patented design into discrete features and assess against the prior designs, giving greater protection to features where there is a limited degree of design freedom. The court will identify the similarities and differences for each feature and attach a weight to each of them while excluding the influence of the pure functional features, materials and internal constructions, etc. The court will then consider all of the features together and assess whether the accused design produces a different overall visual impression from the patented design.

Said design space or degree of design freedom essentially introduces, in deciding design patent infringement, a three-way comparison among the patented design, the accused design and the prior designs. But it shall be noted that the design space is used in the assessment of the design features instead of the assessment of the overall visual impression in Chinese design practices.

By taking into consideration of the design space or degree of design freedom, a more appropriate protection may be imparted to a design patent. The Supreme People’s Court introduced the “design space” as one factor in determining the level of knowledge and discriminability of an ordinary consumer to a design in the Wanfeng motorcycle wheel case (Xing-Ti-zi No. 5/2010) in 2010. In this case, the Supreme People’s Court articulated that there is less degree of design freedom for products with developed designs; a minute change of the designs may produce a profound impression on the ordinary consumer. On the other hand, there is a higher degree of design freedom for new products; the format and style may be diverse, and a minute change will normally not attract the attention of the ordinary consumer. So, for a very new product, generally, a broader protection shall be imparted to it as compared to a traditional product in the context of design patent protection.

This article also provides that the timing for defining the design space is the time of committing the design patent infringement.

Designs of Products in Set

Article 15 of the Judicial Interpretation (II) reads: “For a patent for designs of products in set, where the accused design is identical with or similar to one of the designs, the people’s court shall determine that the accused design falls within the protection scope of the patent.”

According to Article 31 of the Chinese patent law, an application for a patent for design shall be limited to one design, two or more similar designs for the same product, or two or more designs which are incorporated in products belonging to the same class and being sold or used in set; each of these may be filed as one application. Said products belonging to the same class and being sold or used in set are usually referred as “products in set.”

Article 15 of the Judicial Interpretation (II) simply affirms the current practice regarding the construction of the protection scope of a patent right for designs of products in set, which essentially defines a bundle of rights that are independent from each other. Just because one of the designs of the products in set is invalid doesn’t mean that others are invalid; the patentee can sue an infringer on the basis of any one of the designs.

Surprisingly, the Judicial Interpretation (II) doesn't mention the multiple design patent which includes two or more similar designs for the same product. Possibly, the Supreme People’s Court takes it as self-evident that the designs in this type of multiple design patent are also independent from each other.

Design of a Complicated Product

Article 16 of the Judicial Interpretation (II) reads: “For a design patent of a complicated product with a unique assembly relation among the individual components, where the accused design is identical with or similar to the design of the complicated product in its assembled sate, the people’s court shall determine that the accused design falls within the protection scope of the patent.

“For a design patent of a complicated product with no assembly relation or with no unique assembly relation among the individual components, where the accused design is identical with or similar to the designs of all the individual components of the complicated product, the people’s court shall determine that the accused design falls within the protection scope of the patent; where the accused design lacks the design of one individual component of the complicated product or is neither identical with nor similar to the design of one individual component, the people’s court shall determine that the accused design doesn’t fall within the protection scope of the patent.”

As regards the design of a complicated product, the Supreme People’s Court defines two scenarios here: 1) design of a complicated product with unique assembly relation among the individual components; and 2) design of a complicated product with no assembly relation or with no unique assembly relation among the individual components. In whichever scenario, only one single right can be obtained.

An example of a complicated product with unique assembly relation is an electric iron consisting of an iron body and an iron base. The court considers that the value of the design of this type of product lies in its assembled state and therefore only the assembled state of the product shall be protected. In other words, it is possible that a person who misappropriates the design of one component of the product would not be accused of design patent infringement.

Meanwhile, for a complicated product with no assembly relation or with no unique assembly relation among its individual components, such as a chess set, building blocks or poker, the court considers that the value of the design lies in the overall designs of the individual components; since there is no assembled state or the assembled state is uncertain, protection of the design shall be centered on each of the components. So, only when the design of each component of the accused product is found to be identical with or similar to a design of a component of the design patent can infringement be established. Article 16 requires a one-to-one identity or similarity between the corresponding components of products incorporating the compared designs.

The above provisions seem contrary to the protection of innovations of designers.

First, if an applicant files separate design applications for the individual components of a complicated product with or without unique assembly relation, can the applicant obtain effective patents? The answer is yes. Actually, when a design of a component is filed in a design application, the component is taken as a separate product. It is obviously not rational to deny protection of the designs of the components of a complicated product when they are collectively filed in one design application.

Second, it has been commonly acknowledged that a design patent right imparts protection to a design other than the product incorporating the design, though the category of the product might affect the protection scope of the design patent. It seems as if the Supreme People’s Court forgot this and equates products with designs.

Design of a Product with Variant States

Article 17 of the Judicial Interpretation (II) reads: “For a patent for design of a product with variant states, where the accused design is identical with or similar to the patented design in all its use states as shown in the relevant views, the people’s court shall determine that the accused design falls within the protection scope of the patent; where the accused design lacks or is neither identical with nor similar to the design in at least one of its use states, the people’s court shall determine that the accused design doesn’t fall within the protection scope of the patent.”

An example of the type of product with variant use state might be foldable strollers. According to the provision of this article, should the design patent cover a foldable stroller and illustrate the variant use states of the foldable stroller while the accused stroller is not foldable, the latter might not be infringing. This is weird and obviously doesn’t conform to the purpose of encouraging innovation.

Conclusion

The Judicial Interpretation (II) is a law which all levels of courts shall comply with. Any person who is seeking design patent protection in China shall keep the above provisions in mind so as to find an effective way of proceeding.