Article 14 of SPC’S Judicial Interpretation on Trial of Patent Infringment Dispute , the People’s Court, in determining the knowledge level and cognitive ability of the ordinary consumers for a design, generally shall consider the design space of the same or similar type of products to which the patented design belong at the time of the occurrence of the alleged infringement action. Where the design space is larger, the People’s Court may determine that it is typically harder for the ordinary consumers to notice minor differences between different designs; where the design space is smaller, the People’s Court may determine that it is typically easier for the ordinary consumers to notice the minor differences between different designs.

According to previous juridical practices, judgment of infringement of design patent sometimes is considered as being subjective. However, with the People’s Court gradually introducing the concept of design space for determining of infringement, it is required to reconsider the influence of design features in design on the overall visual effect to foresee successfully the outcome in a later infringement lawsuit based on the design patent.

Design space refers to a degree of freedom of a designer when creating design of a specific product. In China, the concept of design space was proposed in a motorcycle wheel case for the very first time. (see Endnote 1) The Supreme People’s Court held in this case that, design space is of great significance in determining the knowledge level and cognitive competence of ordinary consumers for relevant designed product. In the judgment that the design is same as or similar to the preceding design, the design space, or the degree of designer’s freedom for creation, can be taken into account to accurately determine the knowledge level and cognitive competence of the ordinary consumer. Regarding fields with extremely large design space, the ordinary consumer is normally hard to notice minor design differences. Regarding fields having limited design space, the ordinary consumer usually will notice minor differences between different designs.

In terms of the motorcycle wheel in the present case (Figure 1), the wheel consists of rims, spokes and hubs. Under a circumstance that the function of the wheel needs to be achieved, as long as the design of spoke conforms to mechanical requirements, the spoke can be designed into various of shapes and there is a relatively large design space.

Figure 1 (design patent at issue). Click here to view the image.

Furthermore, in a Recreational Vehicle (RV) case (see Endnote 2), which was selected as one of the Chinese 50 Typical IP Cases in 2015, the court applied successfully the concept of design space in determining infringement of a design patent. The Tianjin Higher People’s Court held that, combining the design space and the key point of design of the patented design product, if the same design features between the alleged infringement design and patented design causes a greater influence to the ordinary consumer on the overall visual effect, then there is no substantive difference regarding overall visual effect between the alleged infringement design and the patented design, and they belong to similar designs.

Figure 2 (design patent at issue) Click here to view the image.

Regarding the RV (Figure 2) in this case, after modifying the top, front part, body part and back part of the prototype and adding these elements with certain sense of aesthetic, the involved patented product has relatively significant differences with the prototype in overall appearance. Meanwhile, in these elements, the radiator grille, two-arm rearview mirrors, shape of the headlight, shape of the car windows at both sides, and the backdoor pedal, these design features possess certain novelty, and reflect the patentee’s creative design idea and inventive mental activities. Such elements are the parts in the product which are more likely to draw attention of the ordinary consumer. The shown design features, in general, have a greater influence on the visual effect of the ordinary consumer than the other design features. In the trial of this case, the modified RV generally has a relatively large design space and a plurality of features therein possesses novelty. The same design features between the alleged infringing product and the involved patented product are all shown in the above mentioned design features, which also cause a great influence on the overall visual effect of the ordinary consumer. Thus there is no substantive difference on overall visual effect between the alleged infringement design and the involved patented design; they belong to similar designs; and the alleged infringing product falls into the scope of protection of the patent right of the design at issue.

It can be seen from the above case that the design space is of a practical significance for the judgment of infringement of design patent. Design space belongs to cognize competence of ordinary consumers. But just like the concept of those skilled in the art who determines the inventiveness, how to specifically determine the design space is difficult in practice. However, it is advisable to provide evidence by employing prior design to determine the design space of a design. Regarding a design, usually the larger the design space of a certain design feature is, more variation of designs exist in the prior design. And usually the smaller the design space of a certain design feature is, more similar designs exist in the prior design. Thus, evidences on relevant design features in prior designs shall be consciously collected to better determine the design space of these design features. On the other hand, when performing judgment on similarity, the judge is more likely to accept the opinions of the party who collects more prior design evidence to show design space according to preponderance of evidence.