It is a common understanding that a design patent can be easily granted in China. All it takes is to submit the drawings or photographs and a brief description of the design. There is no need for substantial examination. So, unless the design is the obvious reproduction of something already commonly known (in which case the examiner may refuse the grant of such an "abnormal" application), a design can be easily granted.

Easy to file does not mean that precautions do not need to be taken, in particular before filing.

Two recent high profile cases, where foreign companies found themselves in an uncomfortable situation, provide an opportunity to reflect on such precautions.

In the “Land Rover VS. Land Wind” case (June 2016), Jaguar Land Rover Limited (hereinafter “Land Rover”) had its critical patent weapon against Land Wind declared invalid by the China Patent Reexamination Board (PRB).  In the “Baili VS. Apple” case (May 2016), the Beijing Intellectual Property Office ruled that the iPhone 6 and iPhone 6 Plus designed by Apple infringed a prior design patent of Shenzhen Baili company (hereinafter “Baili”).

These predicaments could have been avoided.

This article intends to offer some practical advice on how innovation-driven businesses should tailor their design patent filing strategy in order to guarantee protection.

1. Keep the design confidential before filing and file as early as possible

In the “Land Rover VS. Land Wind” case, Land Rover filed its design for its product "Evoque" on November 24, 2011, but it was found that the novelty of the design had been destroyed by a public exhibition of such product at the Guangzhou International Automobile Exhibition in December 2010. This constituted an unavoidable ground for invalidation: lack of novelty. According to Article 23 of the Patent Law, a design shall not be identical or similar to "an existing design that is known to the public both domestically and abroad before the date of application”. Land Rover therefore lost its critical patent weapon to fight against its copycat Land Wind X7.

Apple Inc. filed its design application in September 2014 before launching its iPhone 6 and iPhone 6 plus. Unfortunately, Baili’s own design patent had been filed earlier, in January 2014. Baili was, therefore, in an ideal position to claim patent infringement against the iPhone 6 and iPhone 6 plus.

What went wrong? It can hypothetically be assumed that Apple Inc. had finalized a first draft for its iPhone 6 quite some time before the final design was completed and it was ready to launch the product. If Apple Inc. had immediately filed a design application based on the first draft, and kept it unpublished, or had registered a copyright on this first draft, the outcome could have been different. Apple would have been able to defend against Baili on the base of its first design application.

It is therefore advisable to file design application immediately after the first draft of the design of the product is completed. Early filing enhances the stability of the design patent. Not only does it provide a strong right against the infringer, but also provides a protection against others who are working on a similar design application and try to file first and then use the right against the original creator.

2. File one design patent application for similar designs in China

Unlike in Europe and the US, the current patent law in China does not provide for the possibility to file "partial designs". Many new designs are filed, made on an existing product already protected by a design, where only a detail of the product is modified. In Europe and US practice, such novel portion of the product is drawn in solid lines, while the remaining part of the product is drawn in broken lines and serves as a disclaimer (no protection claimed for this part). However, this is not possible in China (it is only envisaged in the draft revision of the law) at the present. In order to "by-pass" this problem, it is recommended to create some similar designs of the overall product that contain the novel partial design feature and to file these similar designs in one design application. This kind of filing strategy makes it more difficult for potential infringers to design around the design patent in order to avoid being sued.

3. File design application for detachable parts that can be regarded as independent

This "partial design" issue is especially serious in the automobile industry. Car designers tend to follow the past design elements and only modify and improve some parts of the product. Since the partial design protection is not available in China, it is recommended to file independent applications that exclusively cover the modified part (such as bumper or hood for vehicle), each time this part can be regarded as an independent product.

There are some judicial precedents illustrating this matter. For example, last year, Honda lost its CR-V case (Civil Judgment (2015) Min Shen Zi No. 3167) against Shuang Huan auto manufacture. After two instances and the retrial of the Supreme People's Court (SPC), the SPC finally dismissed Honda’s infringement claim by finding that Shuang Huan’s accused product did not fall within the protection scope of Honda’s CR-V automobile design patent. Instead, the SPC awarded Shuang Huan tens of millions of damages in its counterclaim against Honda, though in another case (Civil Judgment (2010) Gao Min Zhong Zi No. 1746 and No. 2556), Honda won the case and obtained compensation (upheld by the Beijing High Court) from Shuang Huan based on its bumper design patent.

4. Products "in set" or "component products"

For some types of products, a design application may be filed as either a “products in set” type, or a “component product” type.

This applies to products which belong to the same class and are customarily sold or used at the same time, and therefore, share the same design concept. For example, a combination sofa set consists of several independent sofas which may be combined together to form a set of sofas. The design application for the sofa set can be filed as either a “products in set” type or as a “component product” type. It is the same for jewellery sets, tea sets, etc.

The protection scope for “products in set” is defined in a Judicial Interpretation of the Supreme People's Court dated April 1, 2016, (Interpretations (II) of the Supreme People's Court on Several Issues regarding Application of Law during Trial of Cases related to Patent Infringement Disputes) meaning every design in the “products in set” should be deemed as an independent product. In this case, an accused product will be found infringing as long as it is identical with or similar to either one of the designs in the patent. Whereas for the “component product”, an accused product will only be found infringing if it reproduces each and every design of the patent.

For the types of products discussed above, it appears that the “products in set” design provides a broader protection than a “component product” design patent.

Perspective views of Land Rover’s design patent

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Perspective view of the design patent for “Evoque (two-door)”

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Perspective view of the design patent for “Evoque (four-door)”

Photos taken from the prior Exhibition of “Evoque”

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Prior design 1 in Invalidation Decision for “Evoque (two-door)”

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Prior design 2 in Invalidation Decision for “Evoque (four-door)”

“Land Rover VS. Land Wind”

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Views for Design patent ”Cell phone (100C)” owned by Baili

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Pictures for Phone 6 plus of Apple Inc.

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