Case Review

Zhongshan Shangzheng Plastic Fitting Factory is specialized in clear plastic injection molding and acrylic production. This Zhongshan Company received a summons someday, indicating that one of their products, a teapot light, has infringed on a design patent hold by a Foshan company.

After in-depth analyses, Mr. Jianming FENG, the senior patent attorney of Jiaquan IP Law considered that there were only subtle differences between the patented teapot light and the involved product. The overall appearance and shape and proportion of all parts were similar and therefore they should be deemed as similar designs. Besides, decorative light shaped in teapot is very common in lighting industry. There is an obvious inspiration for the transformation of this kind of design patent. Therefore, the involved design patent should be regarded as invalid according to Article 23(2) of the Patent Law. Our attorney filed a patent invalidation request against the involved design patent. After examination, the Patent Re-examination Board finally issued a decision that the involved design patent shall be invalid.

Legal Basis

Patent Law of the People’s Republic of China

Article 23(2)

Any design for which patent right may be granted shall significantly differ from prior design or combination of prior design features.

Our Comments

This is a typical case in utilizing the provision of transformation of the prior design. Transformation means to apply the design of one product to another product which belongs to a different category.

Guidelines for Examination also have some regulations related to transformation of the prior design.

Part IV, Chapter 5 (6.2.2): The following types of transformation fall into the circumstances where there is an obvious inspiration for the transformation, and designs arising therefrom are not significantly different from the prior design:

(1) the design which simply adopts the basic geometric shape or only slightly changes it;

(2) the design which simply simulates the original form of natural object or natural scenery;

(3) the design which simply simulates the entire or partial shape, pattern, color of well-known building or work; and

(4) the design for product like toy, decoration, food, which is transformed from the design of other category of product.

To sum up, the key point to invalid a design patent for the grounds of transformation of the prior design is: the transformation should involve obvious inspiration, and the outlook of the designs should be similar without distinct difference.