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I. Raising the Criteria for Patentability

In the amended Article 23, the original requirement of “relative novelty” is changed to the requirement of “absolute novelty” to determine the identity of designs, and an “inventive step” requirement is added thereto to judge the patentability of design.

1. As a result of the “absolute novelty” requirement, any design known to the public anywhere in the world before the filing date of a design application can serve as evidence to invalidate the design application patented in China.

(1) The validity of a Chinese design patent may be affected by the applicant’s acts of manufacture, sale, importation, demonstration and exhibition which have been taken in countries and regions outside China.

To deal with the above change, it is important that the applicant can file an application first in his country or a foreign country or region before the design becomes public knowledge, even if he has not yet decided whether to apply for a patent or sell the product of the design in China. If the applicant decides to apply in China within 6 months from the date when the application was first filed in that country or region, he may apply for a design patent in China which claims a right of priority based on the first filed application in that country, and sell his product or take any other actions that may make the design public at any time after the priority date. Thus, the applicant can get a relatively stable right, and meanwhile he can sell the product of the design in China anytime after priority date.

(2) A person may invalidate a design patent, by using as evidence any design which has been publicly used or made known in some way to the public in any foreign country.

(3) An alleged infringer can assert a “prior design plea” by using as evidence a design which has been publicly used or made known in some way to the public in any foreign country.

To ensure the acceptance of the above-mentioned design used as evidence, the evidence must meet the following conditions, since it occurred in the foreign country:

① The requirements of the type and formality of the evidence must be the same as the requirements of the evidence which is used to prove the public use in China;

② In addition, there are special formality requirements* with respect to the procedure required for the foreign evidence.

(*According to the Several Provisions of the Supreme People's Court on the Evidence for Civil Actions, it is required as a notarial and authentication procedure for foreign evidence that evidence formed beyond the territory of the People's Republic of China shall be notarized by the notarial body in the country concerned and verified by the Chinese Embassy or Consulate of the country, or shall be subject to any verification formalities stipulated by a treaty which was concluded between China and the country. The SIPO’s Guidelines for Examination has similar provisions for foreign evidence used in invalidation proceedings.)

2. The “inventive step” requirement means that a patented design should be distinct from a prior design or a combination of the features thereof, which has two implications:

First, the patented design should be distinct from each prior design and has an essentially different overall visual effect. This means that a design patent is not granted to simple commercially converted designs such as simple imitation of natural objects or famous buildings and designs adopting well-known design features, and also to the designs which are not identical with the prior designs but the difference from the prior designs does not notably influence the overall visual effect of the product of the patent design.

Second, the features of two or more prior designs can be combined to determine whether there is a clear distinction between the patented design and the prior designs. Thus, it is noted that a design patent is not granted to those designs made by combining customary design features or the design features of well-known products, and those designs made by combining features of several prior designs.

As can be seen from the above, the requirement for patentability for design has become strict to a large extent.
 
II. Designs of Patterns, Colors or their Combination of Two-dimensional Printed Matter, Used Mainly for the Purpose of Identification are no longer Subject Matters of Design Patent.

More than 20 % of all design patent applications annually received by SIPO are related to package design, and a large number of them have been regarding two-dimensional designs used mainly for the purpose of identification, such as packing bags and tags. This situation not only cannot improve design innovation, but also increases the possibility that design patents conflict with or overlap trademark right and copyright. In this amendment, accordingly the designs of patterns, colors or their combination of two-dimensional printed matter used mainly for the purpose of identification are excluded from patentable subject matters of design patent.

It is to be noted that a mark which identifies the source of a product or its manufacturer is not necessarily a trademark or a manufacturer name. Any patterns, colors or their combination of two-dimensional printed matter will be excluded from the subject matters of Design patent, if they are primarily used to identify them. However, textiles such as bed sheets, window curtains and draperies, despite being two-dimensional products, are not bound by this clause. Designs of three-dimensional packing cases are also not excluded.

We would like to suggest a design patent as to package products as follows:

1. Using the three-dimensional forms upon applying for design patents of packing bag

There is a possibility of dispute about whether a design is “used mainly for the purpose of identification”, because different individuals have somewhat different understanding of a design. To prevent an examiner from rejecting a design patent application for a packing bag on the ground that the design is “used mainly for the purpose of identification”, it is of our opinion that the application of the three-dimensional form may be preferable to such a design as packing bag, for the design is not at least “two-dimensional printed matter” in form. For instance, it is recommendable for the design application of packing bag that the packing bag is filled up to some extent, and then the pictures of the bag may be taken from its six-side views conforming to orthographic projection relationships.

2. Protecting the designs which are used mainly for the purpose of identification by means of trademark or copyright

In case that the applicant has little prospect of being patented for a design used mainly for the purpose of identification, he can also consider protecting it by means of trademark or copyright.
 
III. Adding a Provision regarding “Conflicting Application”

In the same way as invention patent and utility patent, a provision of “conflicting application” is added to design patent in the current amendment. And the subject of a “conflicting application” is defined as “any entity or individual”.
1. How the same or essentially the same designs filed in different date by the same applicant will be affected under the new Law? See the table below:

 

Prior to amendment		Post amendment
Prosecution stage	It is difficult to find the conflicting application in the examination procedure, because a design application is subjected only to a preliminary examination. But when the examiner finds the conflicting applications, he will issue an Office Action to ask the applicant to abandon either one of the conflicting applications.	Prosecution stage	Similarly, difficult to find the conflicting applications in the preliminary examination. But when the examiner finds the conflicting applications, he will issue a notification of rejection to inform the applicant of the fact that the prior application constitutes the conflicting application of the later-filed application and the later-filed application should be abandoned.
Invalidation proceedings	The patentee may choose to abandon either one of the patent. If the patentee abandons neither, the patent requested for invalidation will be declared invalid. If both patents are requested to be invalidated and the patentee refuses to abandon either, both patents will be declared invalid.	Invalidation proceedings	The later-filed application will be declared invalid because of a conflicting application.

As can be seen from the table, under the present Law, the applicant (patentee) may choose to abandon either one of the conflicting application and the later-filed application in the examination procedure or invalidation proceedings, while under the amended Law, the applicant (patentee) has no choice but to abandon the later-filed application.
 
2. Dose the change of the applicable clause from the original Article 9 or Rule 13 to Article 23 affect the determination of whether two designs (which may be filed by the same person or different persons) are the same or essentially the same?

The amended Article 23 is defined in a corresponding way to the wording of the amended Article 22: “Any design for which patent right may be granted shall neither belong to the prior design, nor has any entity or individual filed before the date of filing with the Patent Administration Department Under the State Council an application which describes the identical design and was disclosed in a patent document announced after said date of filing.” The question is whether or not the same approach in the determination of conflicting applications of invention and utility model will be adopted when determining the conflicting application of design. That is, does “the identical design” include a later-filed design which has been explicitly indicated in a prior design application, though the product of the later-filed design is different from that of the prior design?

An example is taken for the explanation of this problem. There are two design applications, one of which is related to an automobile design and has the filing date of May 1, 2008 (hereinafter referred to as application A), and the other of which is related to an automobile bumper design and has the filing date of June 1, 2008 (hereinafter referred to as application B). Further it is noted that the bumper design of the automobile in application A is the same or essentially the same design as the bumper design in application B. Under the present Law, it will be determined based on Article 9 or Rule 13 whether the application A conflicts with the application B. This means that the design in the application A is compared as a whole with that in the application B. As a result, the application A does not affect the patent grant of the application B nor affects the validity of the patented application B, because both of the applications protect two different designs respectively, one for an automobile and the other for an automobile bumper. But there is a problem with this case, that is, if the patentee of application A sells the automobile under the condition that the both applications are patented, he may infringe the patent right of the applicant B. Isn’t it unfair to the patentee of application A?

Under the amended Law, however, Article 23, like a “novelty requirement”, is applied and it will be determined whether the application A discloses a design which is the same or essentially the same as the design in the application B. This means that the application A is a conflicting application of the application B and also affects the validity of the patented application B, since the design of the bumper in the automobile in the application A is the same or essential the same as the design of the bumper in the application B.. As can be seen from the above example, it becomes very important how the meaning of “the identical design” in Article 23 should be construed.

To adapt to this change, an applicant who wishes to apply for a design patent for a product consisting of multiple components, each of which has utility and meets other patentability requirements, may file separate design applications for those components which seem to be creative to some extent. Moreover, in order to prevent the application for the entire product from conflicting with the applications for the components, all the applications should be filed on the same day. Thus, the product can be not only protected better and stronger, but also prevent the free-ride of others who try to use a part of the design of the product.
 
IV. Two or More Similar Designs for the Same Product can be filed in One Application.

It is a common practice that a designer creates a basic design for a product and at the same time he creates a plurality of similar designs relating to the product by diversifying the basic design. The applicant usually hopes to have both the basic design and the similar designs protected in order to avoid the undesirable condition that the design of an alleged infringing product may be judged not to infringe the patented design in the litigation because of a subtle difference therebetween. Under the present Chinese Patent Law, it is not possible to patent the basic design and the similar designs simultaneously. This is because any application will be rejected for the lack of unity of the invention prescribed by Article 31.2, in case that two or more similar designs for the same product are included in the application. On the other hand, when the two or more similar designs are respectively filed as separate applications, the separate applications will be all rejected or invalidated for violating the provision that “for any identical invention-creation, only one patent right shall be granted” when being filed as several applications.

To solve this dilemma, the newly amended Chinese Patent Law allows the applicant to file two or more similar designs for the same product in one application so as to sufficiently protect the applicant’s rights and benefits. In this case, the applicant should designate one design as the basic design in the brief explanation of the application and the other designs must be similar to the basic design. It is to be noted that the number of similar designs cannot exceed ten designs in one application.

The issue is whether this limitation of the design number is disadvantage for a patentee to exercise his patent right. Our opinion is that you have no need to worry about it. The reason is that the similar designs of the same product are only allowed to be filed in one application, so any design that is the same or essentially the same as the basic design falls within the protection scope of the patented design, no matter whether it appears in the application document or not. That is to say, in the possible litigation, an alleged infringing product will be judged as constituting infringement of the patented design so long as the design is the same or essentially the same as the patented design, even if the drawings and photographs of the patented design do not disclose that product. So if there are more than ten similar designs in a patent application for design, the applicant should limit the number of the designs to ten designs and cancel the remaining designs without filing one more application. Even if another application is filed by the applicant, he will not obtain any design right corresponding to the cancelled designs; because this application does not comply with Article 9 which stipulates that only one patent right shall be granted for any identical invention-creation.
 
V. Offering to Sell is Regarded as Infringement of a Patent Right for Design.

Offering to sell was introduced from the TRIPS Agreement to the Chinese Patent Law for the purpose of strengthening patentee’s right, when the Patent Law was amended in 2001. The provision was applied only to invention patent and utility model patent to enlarge the scope of patent protection, but it excluded design patent at the time of its introduction.

In the recent years, plenty of problems have occurred because the provision is not applied to the design patent. For instance, an exhibitor who exhibits an identical product to the product of a patented design won’t be punished by the present Chinese Patent Law as long as he does not sell the product at the exhibition, and on this occasion, the patentee has no means to prevent it. This situation is particularly common in the automobile industry. It happened that some automobile manufactures have used well-known manufacturers’ designs to their products as it is, and exhibited them at the exhibitions, which definitely have a malign influence upon the society.

In this Amendment, the offering to sell is regarded as infringement of a patent right for design, which brings the better safeguard of patentees’ legitimate rights and interests, and strengthen protection to design patents. However, it is to be noted that a stable patent right is essential to bring a lawsuit against others’ infringement.
 
VI. Brief Explanation of Design is Required as a Necessary Application Document and May be Used to Interpret the Design of a Product Shown by Drawings or Photographs.

Among all the Amendments, what is most important and needed to be grasped by designers and patent attorneys is the brief explanation. The brief explanation is required as necessary application document and may be used to interpret the design of product shown by drawings or photographs. Therefore, the drafting of brief explanation should be treated with discretion in the practice of design application.

It is stipulated in the present Patent Law that the scope of protection of the design patent shall be determined by the design of product shown in the drawings or photographs. Since brief descriptions of the drawings or photographs is required from October 1, 2009, all applicants may be concerned about how such descriptions affect a patent right for design. This problem seems to be more significant to foreign applicants, because they have to newly add the description upon filing of design patents in China, since there does not exist the provision in most of countries and regions.

In order to more comprehensively understand this provision, we visited an official with the SIPO’s Law and Treaty Department on February 19, 2009. He said, “I think more practice should be pursued in terms of an appropriate draft of brief explanation, and it is still unclear whether this provision will be favorable for patentees or restricted to interpret the scope of protection in possible enforcement of the patent right. However, it is no doubt that patent attorneys should put much more work when they prepare the application documents from now on.”

Comparing to other parts of the design application, it is particularly important how the main points of the design should be described in a section of brief explanation. As for the description of the brief explanation, we can suggest the following two ways:

1. Writing down the brief explanation as “the main points of the design are as shown in the drawings (photographs)”.

Such a general expression, which is not prohibited by the new version of SIPO’s Guidelines for Examination, means that all the features in the design are the main points thereof. This way of writing is applicable when the applicant does not quite understand any prior design or no search has been conducted.

In case that the “main points of the design” is described in a brief explanation as shown in the above, or the features which should not be regarded as the main points is described as the main points, the patentee may easily argue the “inventive step” in invalidation proceedings or an infringing lawsuit, but may narrow the scope of protection to some extent in the interpretation thereof.

2. Mentioning the improved points briefly, e.g. “The main points of the design are indicated by arrow A”.

This expression can be adopted when the applicant has a clear understanding of the prior designs and his design is improved based on the prior design. For example, if the main points of the design relating to the design of radio lie in the radio’s front panel, the applicant can write down in the brief explanation as it is.

In the infringement lawsuit, if the panel part of alleged infringing radio is determined to be the same or essentially the same as the panel part of the patented design and have a notable influence on the overall visual effect of the radio, and the designs of the other parts of the radio is recognized to be known, then the alleged infringing radio is very likely to be judged as an infringement. In other words, this kind of expression may cause the scope of protection of the design patent to be interpreted somewhat broadly.

In the above example, however, the design patent is more likely to be invalidated in the invalidation proceedings due to the brief explanation described in the above manner. In other words, if the panel part of the design patent is proved to be already known, it is very difficult for the patentee to argue for the “inventive step”, since he has recognized the other parts thereof is also known in the brief explanation.

In fact, the validity of the patented design or the infringement of the alleged product design depends on whether the difference between the prior design submitted by the requester of invalidation or the design of the alleged infringing product and the patented design notably affects the overall visual effect of their respective products. But the prior design held by the requester of invalidation or the alleged infringer is frequently different from that held by the patentee. This brings uncertainty to infringement determination. So it is important for the designer to inform the attorney of his design’s improvement over the prior design and consult with him in order to draft a more appropriate brief explanation. Needless to say, the drafting experience of attorney is important, and further it is very crucial for him to understand the point of design creation and the knowledge the relevant products.
 
VII. Evaluation Report as Evidence in Infringement Disputes

The provision regarding the search report on a utility model patent was added to the second Amendment of Chinese Patent Law which entered into force on July 1, 2001. Such a report is good evidence to prove the stability of patent rights granted without examination. In the third Amendment, the scope of evaluation report is extended to design patents. Furthermore, it covers not only an evaluation on whether a utility model or design possesses novelty and inventiveness but also a comprehensive analysis and assessment of whether it meets the other patentability requirements. An evaluation report provides the patentee of a design patent with stronger evidence to prove the validity and stability of his patent.

In practice, a patentee should take the following preparatory procedures before enforcing his right:

1. Requesting SIPO to make an evaluation report on the patent;

2. Analyzing the validity of the patent himself.

It is herein noted that the evaluation report made by SIPO is neither an administrative decision nor a formal judgment of the validity of the patent right, but only a proof concerning the stability of a patent right for design or utility model. Accordingly, the patentee cannot rely merely on the report to evaluate the validity of the patent right, but should conduct a prior design search and analysis based on the report to ascertain the stability of the patent right.
 
VIII. Prescribing a Principle of “Prior Design Plea”

The principle of prior design plea does not exist in the present Chinese Patent Law, but is admitted in the current judicial practice by courts in the trial of patent disputes in accordance with Article 9(2) of the Several Provisions of the Supreme People’s Court on Issues Concerning Applicable Laws to the Trial of Patent Infringement Controversies, which states that the trial of an infringement dispute over an utility model or design may not be suspended if the evidence provided by the defendant is enough to prove that the technology used by him has been made known to the public. In the current Amendment, this principle is explicitly stipulated in Chinese Patent Law, so that courts have a provision to follow in dealing with patent infringement lawsuits. This is also the first time that the principle of “prior design plea” is introduced into the Chinese legal system.

The adoption of the “prior design plea” principle is a warning to those entities and individuals who file the prior designs as new applications and abuse their right to litigate in order to get the innocent persons in patent infringing litigations. It also helps courts to close cases rapidly without waiting for the decision from the Patent Reexamination Board. In addition, if an alleged infringer has sufficient evidence to prove that his design is a prior design, he may choose not to file a request for invalidation of the patent from the view-point of lawsuit economy.

Under this principle, the judge will first compare an alleged infringing product with a prior design in an infringement lawsuit. If they are identical or essentially identical, the judge will not consider whether the alleged infringing product falls within the scope of protection of the design patent. This means that the practice actually neglects the patent issued by SIPO in a certain sense. Therefore, the practice has been widely discussed in the academic community as well as in the society of practical level. It is a topic worth discussing further whether the introduction of this principle to the Chinese Patent Law will bring disadvantages to patentees or will be favorable for fair competition.
 
IX. Clarifying the Meaning of “Right Conflicting”

Since IP rights protect intangible subject matters, it happens that the same subject matter is simultaneously protected by different category of IP rights. Consequently, there is a possibility that different persons may have different category of IP rights with respect to the same subject matter. In case that one person tries to enforce his right, he may happen to infringe another person’s legitimate rights and interests. Moreover, this characteristic of right conflicting seems to be intentionally utilized by a few people, for example, such behavior as to disturb the regular order of the market economy by using another people’s trademark in a patent application for design of a packing bag. To solve this issue of right conflicting with respect to the same product, it is stipulated in the second amended Chinese Patent Law and the Chinese Trademark Law that “any design for which patent right may be granted must not be in conflict with any prior right of any other person”. However, the problem is that the meaning of the word “prior right” was not clearly defined. The third amended Chinese Patent Law makes it clear by stating that “any design for which a patent right may be granted must not be in conflict with any legal right of any other person that was acquired before the date of filing (the priority date where priority is claimed)”. It should be noted that the new Law also stipulates the criteria in terms of the right conflicting, e.g., the criteria of similarity in terms of the trademarks, in principle, is applicable to the determination of whether a design is identical or similar to a prior trademark.

Just from the nature of Intellectual Property, an applicant tries to protect his creative design by utilizing various kinds of IP rights. For example, if a design is very innovative and creative and meets the requirements for applications of a design patent, a trademark and a copyright, the applicant can protect the design with a design patent, a trademark, a stereoscopic trademark and a copyright at the same time.  One typical example is that we could win a trademark infringing lawsuit in 2008 by means of a copyright. In conclusion, protecting one design with various kinds of IP rights can not only prevent others from obtaining another type of IP right by utilizing the design, but also provide the design with more comprehensive and longer protection, because the protection durations for trademark and copyright both are longer than that for design patent.
 

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