For a Chinese design patent application, if the applicant wants to claim protection of the visual effect of a transparent material, he or she shall indicate this clearly in the brief description with the drawings or photographs showing the claimed design. Regarding the protection scope of a design patent with a transparent portion, the Guidelines for Patent Examinationclearly states that the internal elements such as the shape, the patterns and the colors viewable through the transparent materials constitute a portion of the claimed design. What if the design patent doesn't specify a transparent material/portion, while the accused product is transparent at a portion thereof? The Supreme People's Court addressed this issue in Shenzhen EMOI Lifestyle Co., Ltd.(requester for retrial, plaintiff) v. HAN Lu (defendant),Supreme People's Court (2014) Min Shen Zi No. 1367.
Shenzhen EMOI Lifestyle, the plaintiff of the first instance and the exclusive licensee of Chinese design patent No. 200830106916.0for a "water cup" (please refer to the attached figure), was not satisfied with the decision ((2014) Shan Min San Zhong Zi No. 00010) of Shanxi High People's Court which rejected its infringement claim against HAN Lu and requested for retrial with the Supreme People's Court. One of the key issues in debate relates to the influence of the transparent material/portion of the product to the determination of the design patent infringement. Shenzhen EMOI Lifestyle alleged that,
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The design of the cup lid incorporated in the alleged design patent is unique. It is a significant feature of the alleged design patent over other water cups in the market, and is also aremarkable indicator for ordinary consumers to identify the water cup. The cup lid of the accused product is completely identical with that of the alleged design patent. Meanwhile, the cup body of the alleged design patent is a common design in the art. The accused product includes additionally an outer cup body portion around the cup body, which is made of a transparent material and in the same shape as the inner cup body portion, and is also a common design. Although the alleged design patent doesn't indicate that its cup body is made of a transparent material, it doesn't exclude use of a transparent material as its cup body. The accused product therefore is similar to the alleged design patent and falls within the protection scope of the alleged design patent.
The Court opined that,
The protection scope of a design patent shall be determined by the design of the product as shown in the drawings or photographs. The brief description may be used to interpret the design of the product as shown in the drawings or photographs. According to the Guidelines for Patent Examination, if the product incorporating the claimed design is made of a transparent material or a new material with special visual effect, the applicant shall indicate it when necessary. If the granted design patent doesn't specify the above in the brief description, it implies that, on one hand the patentee doesn't want to specify the material for manufacturing the product and doesn't exclude use of a transparent material; on the other hand the patentee doesn't claim a unique design brought by the product made of a transparent material or a new material of special visual effect. In this case, when assessing whether the accused product made of a transparent material or a new material of special visual effect is identical with or similar to the alleged design patent, Article 11 of the Interpretation of the Supreme People's Court on Some Issues Concerning the Application of Laws to the Trial of Patent Infringement Disputes (Judicial Interpretation No. 21  of the Supreme People's Court) shall be followed, i.e. a comprehensive judgment should be made in view of the overall visual effects of the design based on the design feature(s) of the patented design and the accused infringing design when determining the identity or similarity of designs. If the accused product only simply changes the material of manufacture based on the alleged design patent, and its overall visual effect is not different or substantially different from the alleged design patent, said accused product falls within the protection scope of the alleged design patent. If the special use of a material brings the accused product a different overall visual effect from the alleged design patent, the two are not similar. The internal structure viewable through the transparent material, as one part of the design of the accused product, shall be considered when assessing the similarity between two designs.
In this case, the alleged design patent claims the design of a product consisting of a cup lid and a cup body. The cup body is in the shape of a slightly reversed frustum of a cone, with the cup lid being a cylinder bigger than the cup body slightly in their diameters and having a projected hoop for wristband. The accused product is a green water cup. The cup lid thereof is substantially the same as that of the alleged design patent, and the cup body thereof is consisted of an inner layer and an outer layer. The outer layer is transparent and a consumer can see the green inner cup body through it. The accused product has a cup lid in a shape close to that of the alleged design patent.But it has a two layer design with a transparent outer cup boy portion as the outer layer, which makes its overall visual effect different from the alleged design patent. The trail judgement didn't err in adjudicating that the accused product is not identical with nor similar to the alleged design patent. Since both the cup lids and the cup bodies of the accused product and the product incorporating the alleged design patent have influences on their overall visual effects, the allegation of Shenzhen EMOI Lifestyle that the cup body of the accused product is a common design and the cup lid is of significance in identifying the water cup is not supported by evidence. Meanwhile, although the alleged design patent doesn't exclude use of a transparent material, as discussed before, the accused product, by using a transparent material locally, causes a visual contrast between the transparent portion and the non-transparent green portions and further causes an obviously different overall visual effect from the alleged design patent. Therefore, the allegation of Shenzhen EMOI Lifestyle that the accused product falls within the protection scope of the alleged design patent in spite of the transparent material used by the accused product doesn't stand.
Taking advantage of the multiple design application practice in China, an applicant may include more than one design in a single design patent application, which will provide a protection scope equal to the sum of the protection provided by each of the designs. When a portion of a design might be transparent or when a competitor may design around by changing the material of the claimed design, it is an efficient approach to include the designs with varied materials into a single design application.