HOME > English > Insights > Patent

Linda Liu & Partners

 
The focus of the case we are discussing here lies in “Whether two or more similar design patent rights which were granted based on the applications filed by the same applicant on the same day with respect to one product violate the provision of Clause 1, Article 13 of the Implementing Regulation of Patent Law and the ‘double patenting’ principle forbidden by the Patent Law”. According to the Guidelines for Examination, it is defined that “the identical design means these two designs are the same or similar”.  However, it seems that the view of the State Intellectual Property Office Patent Reexamination Board is totally different from that of the Beijing Higher People’s Court. We hope the analysis and comments of this case help you prosecute the similar case in the future.  
 
1. Case history
 
Company X has filed two applications for design patent with the SIPO on March 27, 2003, on which the patent rights 03315514.3 and ZL03315516.X were granted on October 6, 2003 respectively.
 
On June 5, 2006, Company Y filed the request for invalidation of patent No. 03315514.3 on the ground that the patent can not comply with the provision of Clause 1, Article 13 of the Patent Law with the State Intellectual Property Office Patent Reexamination Board (hereinafter referred to as “the Board”. As evidence they submitted three reference documents to the Board, including the copy of Patent Gazette for the design patent No. ZL03315516.X.
 
On June 7, 2007, the Board declared the invalidation of this patent in the Decision of No.9927. The patentee was dissatisfied with the Board’s Decision and appealed an administrative action before Beijing No.1 Intermediate People’s Court (hereinafter referred to as “the court of first instance”). The court of first instance judged to revoke the Decision made by the Board. The Board appealed against the court’s judgment to Beijing Higher People’s Court (hereinafter referred to as “the court of second instance”). On July 18, 2008 the court of second instance ruled that “the appeal ground by the Board is not tenable and its appeal claim can not be allowed. The original judgment is recognized to ascertain the relationship of the fact clearly and apply the law correctly, thus the court maintains the original judgment of first instance”.
 
2. The disputed point of this case
 
(1) Whether it is regarded as violation of the provision of Clause 1, Article 13 of the Implementing Regulation of Patent Law and the principle of ‘double patenting’ forbidden by the Patent Law that the same applicant enjoys two or more similar design rights that are based on a plurality of applications filed on the same day with respect to one product?”
 
(2) How the meaning of “the same design” should be interpreted?
 
3. Viewpoints of the Board, court of first instance and court of second instance.
 
★ Viewpoint of the Board
 
(1)The industrial design in the reference document is the one which the same applicant filed on the same day with the design patent in dispute and thereafter the patent right was granted thereon. Therefore it is apparent that the demandant can submit it as the evidence for the invalidation request in accordance with Clause 1, Article 13 of the Implementing Regulations of Patent Law.
 
(2)By comparing the designs of this patent and the one in the reference document, we can find that the figures of both designs are almost identical and the overall appearances are similar. Although there are some slight differences between them, these differences will not be so substantial that the designs of both products give the obviously different impression in terms of the whole appearance. According to the principle that a similarity of design should be comprehensively determined by observation of whole appearance, it is ruled that the design in dispute is similar to the one of the reference.
 
(3) According to the provision of Guidelines for Examination, it is admitted that the both patents belong to “the identical invention”. Therefore, in view of the reference document this design patent does not comply with the stipulation of Clause 1, Article 13 of the Implementing Regulations of Patent Law. It is decided that the design patent should be invalidated.
 
★ Viewpoint of the court of first instance
 
(1) Two or more similar design applications filed by the same applicant on the same day will neither cause right collision between different right subjects, nor damage the interests of country, public or other persons due to the extended protection period caused by different protection periods. Even if more than one patent rights are granted based on a plurality of applications for similar designs, it does not means that the basic principle of “double patenting” is violated.
 
(2) As for the multiple applications for design patent which are filed by the same applicant on the same day, the Guidelines for Examination defines “the identical design” as “two industrial designs are the same or similar”. Apparently the definition is contrary to the legislative intent of Patent Law and its Implementing Regulations, so that the definition cannot be taken as the reference for the trial of the People’s Court. In this circumstance, “the identical design” should be interpreted as the same design of appearance, but not include similar design of appearance.
 
(3)In this case, as the design patent and the reference document are both originated from the design applications filed by Company A on March 27, 2003, both are regarded as the same day applications by the same person. The criteria of whether this patent violates the provision of Clause 1, Article 13 of the Implementing Regulations of Patent Law shall depend on the factual finding if this design patent and the reference document belong to the category of the same design. By comparing this design patent and the reference document, it can be seen that there exists certain differences between them and thus they do not belong to the same design. The granting of this patent right does not raise the issue of double patenting. The Patent Reexamination Board’s Invalidation Decision in accordance with Clause 1, Article 13 of Implementing Regulations on the Patent Law has made mistake in the interpretation and application of the law.
 
★Viewpoint of the court of second instance
 
(1) Article 9 of the Patent Law proscribes: “Where two or more applicants file applications for patent for the identical invention-creation, the patent right shall be granted to the applicant whose application was filed first.” Clause 1, Article 13 of Implementing Regulations of the Patent Law prescribes: “For any identical invention-creation, only one patent right shall be granted”. Thus, where different applicants file applications for the identical invention-creation, the patent right shall be granted to the applicant whose application was filed first. On the other hand, where the same applicant files applications for the identical invention-creation, the application filed later shall not be granted the patent right. Furthermore where the same applicant files multiple applications on the same day, only one patent right shall be granted.
 
(2)As for the design patent, the Guidelines for Examination prescribes that “the identical design means that two designs are the same or similar.” When different applicants file two or more applications for similar designs for the same product, and when the same applicant files two or more applications for similar designs for one product, the above provisions stipulated in the Guidelines for Examination are recognized to be proper and pertinent. However, when the same applicant files two or more applications for similar designs with respect to the same product on the same day, the above provisions stipulated in the Guidelines for Examination are contrary to the legislative intents of the Patent Law and Implementing Regulations of Patent Law. Under such circumstance, “identical design” should be interpreted that the designs of appearance are the same, but not include that the designs of appearance are similar.
 
(3) In this case, the fact that the Company A filed, on the same day, multiple applications for similar design on the same product did not violate any provision of law and damage any legal interests of country, society and others. Instead the multiple applications should be confirmed and protected because it is coincident with the original legislative intent of encouraging inventions and promoting scientific innovation and progress embodied in the Patent Law and Implementing Regulations of Patent Law. The Board’s Invalidation Decision in accordance with Clause 1, Article 13 of Implementing Regulations of Patent Law made mistake in the interpretation and the application of law. Therefore the decision of the Board should be revoked.

4. Viewpoint and Opinion of our firm

Article 9 of the Patent Law prescribes: “Where two or more applicants file applications for patent for the identical invention-creation, the patent right shall be granted to the applicant whose application was filed first.” Based on the principle of first-to-file, this article prescribes how to grant patent right where different applicants separately file applications for the same invention-creation, and thus will not cause opposition.
 
Clause 1, Article 13 of Implementing Regulations of the Patent Law prescribes: “For any identical invention-creation, only one patent right shall be granted”. It stipulates the principle of double patenting, which means that the same patent right should not be repeatedly granted to the different entities and also should not be repeatedly granted even to the same entity. With respect to design patent, it is of our opinion that the subsequent two or more applications should be resolved in view of the above provisions of the Patent Law and Implementing Regulations of Patent Law, in case that the different entities file the two or more applications for identical or similar designs on the same product, and that the same entity applies the applications for identical or similar designs.
 
Clause 2, Article 13 of the Implementing Regulations of Patent Law prescribes how to grant the patent right where the different applicants file applications for identical invention-creation. That is, the two or more applicants who file the applications for patent for the identical invention-creation on the same day shall, after receipt of a notification from the Patent Administrative Organ under the State Council, hold consultation among themselves according to Article 9 of the Patent Law to decide on the person or persons who shall be entitled to file the application. However, there is no relevant provision on how the design patent should be granted when the same applicant files a plurality of applications for similar designs.
 
The stipulation of “the identical design means two same or similar designs” in the Guidelines for Examination causes the inconsistency of the viewpoints between the Board and court. Taking Article 9 of the Patent Law and Clause 1, Article 13 of Implementing Regulations of the Patent Law into reconsideration, we will draw the following conclusion according to the final opinion of Beijing court.
 
(1) Where the different applicants file two or more applications for identical or similar designs on the same product, the patent right shall be granted to the applicant whose application was filed first. If two or more applicants file the respective applications on the same day, the applicants shall, after receipt of a notification from the Patent Administrative Organ under the State Council, hold consultation among themselves to decide the right applicant.
 
(2) Where the same applicant consecutively files a plurality of applications for the identical invention-creation, the patent right shall not be granted to the later-filed applicant. The reason is that if the patent rights are granted to the same person, the extended legal protection period caused by the different protection periods will damage the interests of country, society and others. In practice, the later-filed patent can be invalidated by means of the prior-filed patent.
 
(3) Where the same applicant files two or more identical design applications with respect to the same product on the same day, only one patent right shall be granted. The reason is that only one patent right can be granted to the same invention-creation and the patent right cannot be granted over again.
 
(4) Where the same applicant files two or more applications for the similar design patents, the patent right can be granted the respective design applications. The reason is that:
 
① According to the legislative intent of China Patent Law, the patent applications should be allowed and protected as long as the applicant’s invention-creation meets the requirements of the relevant laws and does not violate any legal interests of country, public and others, on the assumption that they are in conformity with the original legislative intent of encouraging inventions and promoting scientific innovation and progress embodied in the Patent Law and Implementing Regulations of Patent Law.
 
② Practically, on the same day the applicant normally files two or more applications for similar designs on the same product so as to enlarge the protection scope of the design patents and prevent others from infringing his own right, as well as to meet the needs of consumers and enhance the competitiveness. However, it should be noted that the above filing practice is not forbidden by the law.
 
③ Clause 2, Article 31 of the Patent Law prescribes: An app1ication for a design patent shall be limited to one design incorporated in one product. Two or more designs which are incorporated in products which belong to the same c1ass and are sold or used in sets may be filed in one application. According to this article, it is not the applicant’s liability but the defect of the law itself that the applicant has to separately file two or more applications instead of one application for the protection of the similar designs on the same day.
 
5. Expectation about the third draft amendment of the Patent Law
 
Many enterprises expect to protect a series of their products, because the products happen to be similar to each other. In practice, the designer usually invents the new basic design and proposes numerous designs similar to the basic design. The applicants of design patent generally expect both their basic design and the similar designs to be protected by the patents, so that the design of the possible infringing product may be admitted to be infringed because of the slight difference between the targeted design and the patented design.
 
However, the above purpose is hardly achieved based on the current China Patent Law and Implementing Regulations of Patent Law. If the applicant requires the protection of plural similar designs in one application for design patent, the application may be refused due to the reason that the application does not meet the requirement of Clause 2, Article 31 of the Patent Law. If the applicant files a plurality of applications for design patent which requires separate protection for similar designs, it may also be refused due to the provision of Clause 1, Article 13 of Implementing Regulations of Patent Law which stipulates “For any identical invention-creation, only one patent right shall be granted”.
 
Looking from the aspect of foreign law, the multiple applications for the similar designs which are filed on the same day by the same applicant belong to the affiliated applications, so that these applications should be naturally protected. Japan’s Patent Law prescribes that one applicant may file the applications for affiliated design patents on multiple similar products. Since there is no explicit provision in China’s Patent Law, the conflict of viewpoints between the Board and the court get to be unavoidable.

In China, although the courts of first instance and second instance in Beijing ruled expressly as explained above, the Board will probably make the same decision opposite to the viewpoint of courts, if the Patent Law, Implementing Regulations of the Patent Law and Guidelines for Examination will not be revised. This must be a defect of the law. Thus, in order to solve this problem, in the third draft amendment of the Patent Law the Article 32 was proposed to be revised as follows: An app1ication for a patent for design shall be limited to one design. Two or more similar designs which are incorporated in one product may be filed as one application. If this draft amendment can be approved successfully, the applicant will be able to file only one application for two or more similar designs on one product. Thus, the conflict will be solved naturally. Moreover, the Guidelines for Examination should also be amended in accordance with the amendment of the Patent Law so as to avoid the occurrence of the conflicts of viewpoints between the Board and the court. In that sense, we are looking forward to the introduction of the newly revised Patent Law as soon as possible.
 

（2008）