Guide: In determining whether or not a design patent is similar to prior designs, whether or not it has obvious effect on the prior designs from the overall visual effect shall be determined.

Introduction:
The petitioner filed a request for invalidation of the design patent named “game console” (Patent No.: 200830127376.4). Entrusted by the patentee, Linda Liu & Partners handled relevant issues of invalidation procedure of the patent on behalf the patentee. The Patent Reexamination Board of the State Intellectual Property Office (SIPO) held that: the distinguishing features of the disputed patent over prior design 1 and prior design 2 had obvious effects on the overall visual effects of the disputed patent, prior design 1 and prior design 2, thus the disputed patent was a design that neither same nor similar to prior design 1 and prior design 2. Finally, the Patent Reexamination Board sustained the whole validity of the disputed design patent.

Highlights of the case:
(1) Grounds for the request for invalidation filed by the petitioner were: the disputed patent was a simple combination of prior design features in Evidences 1-3, thus did not possess novelty. We pointed out in the observation that: the grounds for the request for invalidation applied the incorrect articles of law, thus in comparing similarity of the designs, the three evidences submitted by the petitioner shall be compared with the disputed patent respectively. The Patent Reexamination Board supported our argument.

(2) The petitioner claimed that: the disputed patent was basically the same with prior designs in the front side, which comprised the main design features, thus constituted similar design to prior designs. We argued that: the disputed design presented an overall impression of “multiple cubes dynamically integrating with each other in a unique way” and belonged to brand-new designs; it had unique visual effect and distinct difference from any prior design. The Patent Reexamination Board supported our argument.

(3) During the oral hearing, the petitioner submitted a copy of Written Request for Processing that the patentee submitted to the Guangzhou Intellectual Property Bureau as Evidence 4 and pointed out that the patentee had emphasized on pages 3-5 of Evidence 4 that users would be standing on the front, therefore the comparison shall be based on the front side as the side face would be difficult to notice. We pointed out that Evidence 4, which was filed by the patentee in an infringement action, was irrelevant to designs in Evidences 2 and 3; in determining whether or not a design was same to or similar with prior designs, overall observation and synthetic judgment shall be applied. One shall make the synthetic judgment from the overall appearance of the product, and the observation of the patentee in an infringement action shall not be used as a principle for the Patent Reexamination Board in determining the similarity of designs. The Patent Reexamination Board supported our arguments. As shown above, the keys to the success of this case are the deep research on standard of similarity determination of design patents and reasonable and well-documented replies.