Article 62 of the Chinese Patent Law (2009) reads,

In a patent infringement dispute, where the alleged infringer has evidence to prove that the technology or design exploited by it or him forms part of prior art or is prior design, such exploitation does not constitute infringement of patent right.

This is so called prior art or prior design defense, which can be alleged by a defendant in a patent infringement litigation. When a patent for design is alleged by the plaintiff, the defendant may, as a defense, prove to the court that the design taken by the accused product is identical with or not substantially different from a design already known before the filing date of the alleged design patent.

In Nanjing Yuanding Electromechanical v. Liu Chen made by the Supreme Court on Nov. 4, 2014, defendant Liu Chen submitted notarized documents to support his argument that, in a Special Report of the 18th Beijing International Radio, TV & Film Exhibition (BIRTV) (2009), an exhibited product - load bearing vest “Knight d204” made by Shenzhen Movcam Technology Co., Ltd. was shown; since the Exhibition was held before the filing date of the alleged design patent 201230039875.4, the design of the load bearing vest “Knight d204” is prior design to the alleged design patent; the accused infringing product copied the design of the exhibited load bearing vest. In response, Nanjing Yuanding Electromechanical alleged that Shenzhen Movcam did never attend the Exhibition. Nanjing Yuanding Electromechanical also submitted a notarized document to support its argument.

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Perspective view of the alleged design

The Court found, the Special Report of the Exhibition shows a front view of the load bearing vest, however, said view of the vest is blurry and does not clearly shows the overall shape of the west as well as the shapes of the relevant parts of the vest, it is therefore not possible to compare the accused infringing product with this prior design of said exhibited vest alleged by defendant Liu Chen.

The Court held,

Even if Shenzhen Movcam attended the Exhibition, it is yet not possible to prove that the alleged infringing product sold by Liu Chen copied the load bearing vest “knight d204” as disclosed in the Special Report of the Exhibition instead of the alleged design patent. The image shown in the Special Report of the Exhibition can not be valid evidence for supporting the prior design defense by the accused infringer.

The retrial request of the accused infringer, i.e. the defendant Liu Chen, was therefore rejected by the Supreme Court.

Incidentally, during the above litigation, Liu Chen filed a request for invalidation with the Patent Reexamination Board against the design patent 201230039875.4 based on evidence including the notarized documents which were submitted in the infringement litigation for supporting his prior design defense. The Patent Reexamination Board made a decision finally by announcing the design patent valid and Liu Chen did not appeal said decision. Yet the Supreme Court didn’t take this fact in reasoning its ruling.

From this case, it is clear that, to support a prior design defense, the prior design shall have already been clearly disclosed so that one can definitely identify the design, before the filing date of the patent concerned.