Guide: How to determine whether or not a design patent have distinct differences over the prior design?

Introduction:
Entrusted by the petitioner of request for invalidation, Linda Liu & Partners filed a request for invalidation of the design patent named “game console (magic musical game console II)” (Patent No.: 201030264620.9). The Patent Reexamination Board of the State Intellectual Property Office (SIPO) held that: the disputed patent had several distinguishing features over References 1 and 2, wherein, (1) difference of the head portion, which was a common cuboid, was only the increase on height, but as the length-to-width ratio, set position and angle of the disputed patent were all same with Reference 1, the difference only in height cannot be regarded as a distinct difference; (2) difference of accessory device used for inserting advertisement, which occupied a small portion of the game console and was located on the rear side of the game console, was hard for general consumers to notice and thus belonged to nuances. Therefore, it can be determined that the disputed patent did not have distinct differences over the combination of References 1 and 2; and (3) On each side of the game console and near loudspeakers of the disputed patent located a vent in the shape of inclined rectangle respectively, and on the right side of the lower portion of the console and near the pedestal located a door in the shape of rectangle for taking and placing of game currency. The above distinguishing features occupied small portions of the game console and had the common shape of rectangle, hence only have small effects on the overall visual effect of the game console. Therefore, the disputed patent did not have distinct difference over the combination of References 1 and 2. Finally, the Patent Reexamination Board announced that the disputed design patent was wholly invalid.

Highlight of the case:
(1) We adopted the way of combining evidences of disclosure of publications and disclosure on Internet (webpages of news information), and elaborated our arguments with combination of various evidences. Finally, the Patent Reexamination Board supported our arguments.

(2) In the Request for Invalidation, we provided Evidences 6 and 7 in the form of printed webpages to prove that the disputed patent did not have distinct differences over the prior design. During the oral hearing, the patentee did not accept the authenticity of Evidences 6 and 7, arguing that Evidence 6 was a webpage of an affiliated enterprise of the petitioner, hence its content and time could be modified, and Evidence 7 did not have relevant pictures of design. We argued that although Evidence 6 was a webpage of an agent of the petitioner, yet Evidence 6, webpage of an animation information platform, was a third-party webpage; contents and upload times of Evidences 6 and 7 mutually verified instead of contradicting with each other; moreover, the aforementioned dates were all prior to the filing date of the disputed patent. Therefore, the collegial panel determined the authenticity of Evidences 6 and 7 where there was no counterevidence to overturn the two evidences. Finally, the Patent Reexamination Board supported our argument.