Editor’ Notes: On February 1, 2009, the new Implementing Regulations of the Patent Law of the People’s Republic of China entered into effect, marking an end to the third revision of the Patent Law of China. In review, the legislative intent of the revision is to improve China’s patent quality. Among the many amendments, the most noticeable is the patentability requirement for the design patent. With the promulgation of the Implementing Regulations and the Patent Examination Guide, as amended, examining practices have gradually materialized.

With respect to the amendments of the Implementing Regulations and the Patent Examination Guide, this article discusses the application of Article 23 of the new Patent Law, addressing specifically Article 23 (1) and (2)  “not belong to the prior art” and “distinctively different from the prior art or combination of elements of the prior arts.” It also analyzes in detail the major changes to the conflict of rights system for design patents in the Implementing Regulations.

The authors of this article are also the authors and proofreaders of Part IV Chapter 5 of the amended Patent Examination Guide. In this article, they reveal the legislative intent from their experiences of previous discussions on the Implementing Regulations and the Patent Examination Guide.

 

The revision act of December 27, 2008 of the Patent Law introduces extensive change to the patentability requirements for designs, and the Implementing Regulations (effectively as of(February 1, 2010), and the Patent Examination Guide (effective as of January 21, 2010) provide working guidance for the patentability requirements.

 

Table 1 Examination before revisions of the Patent Law, Implementing Regulations, and Patent Examination Guide

Statute	Purpose	Application	Examination Standards
Art. 23 of Patent Law	Identicalness or similarity determination	Comparing with designs in the publication in this country or abroad, or in public use in this country prior to the application date”	Identicalness or similarity, wherein the test of similarity is whether the  differences between the two may affect the overall visual effect
Art. 9 of Patent Law; Art. 13 of Implementing Regulations	Double patenting	Two patents of the same or different application dates by the same patentee; or two patents of the same or different application days by separate patentees	The identicalness of subject matters; contain designs identical or similar, the similar test being on how distinctively the difference of the two may affect the overall visual effect

 

As shown in Table 1, before the third revision of the Patent Law (herein, the “Revision”), the identicalness and similarity tests dealt with the application of Articles 23 and 9 of the Patent Law and Article 13 of the Implementing Regulations, of which the test for similarity is that by a general observation of an ordinary consumer, whether the dissimilarity between the two designs have any obvious influence upon the overall visual effect. In this test, an ordinary consumer has common sense knowledge on the designs of identical or similar types, possessing to some degree the ability to notice differences in shape, pattern or color, but will not notice any minute variations in the shape, pattern or color of the products.

 

Before the third Revision, the Implementing Regulations provided in Article 65(3) that an issued design patent may be invalidated upon request per a prior use on basis of such patent conflicts with his prior rights; however, the Patent Reexamination Board will not entertain such a request in the absence of an effective determination or judgment proving such conflict. This would allow the Board to make an objective and accurate determination on whether conflicts exist based on the relevant determinations or judgments proffered by the requesters. However, since it is difficult for the invalidation requester to obtain such a determination or judgment pending the causes of action, the above provision in the Implementing Regulations proved to be useless in the examination of design patents, leading to the failure for the protection of the prior user rights.

 

Patentability test for design patents before the Revision focused on identicalness or similarity, and so was it for double patenting. The Law, the Regulations, and the Examining Guide, as revised, no longer apply the identicalness test, but a three-part test for “identicalness,” “substantial identicalness” and “absence of obvious distinction.” As shown in Figure 1, the logical structure of the patentability test under the Law, the Regulations and the Examining Guides is illustrated in Table 2.

 

 

 

 

 

 

Figure 1

 

 

相同：Identical

相近似：Similar

相同：Identical

实质相同：Substantively Identical

不具有明显区别：Not Distinctively Different

(黄色部分请设计对应修改以上图片为英文)

 

Table 2 describes in detail the logic structure of the tests after the amendment.

 

Legal provision	Systemic meaning	Application situation	Applicable criteria
Article 9 of Patent Law	Double patenting	Comparison between two patents of a single owner or two different owners, which have the same application date	Identical or substantively identical
Article 23 (1) of Patent Law	Not belong to the prior art	Comparison of the given design patent with the prior art	Identical or substantively identical
	Competing applications	Comparison of the given design patent with the design of any organization or individual that has been applied for before or announced after the application date (that is, two patents of a single owner or two owners, which have different application dates)	Identical or substantively identical
Article 23 (2) of Patent Law	Distinctively different	Comparison of the given design patent with the prior art of an identical or similar class	The difference between the two do not have a distinctive impact on the overall visual effect
	Trans-use of the prior art	The prior art contains enlightenments on how to trans-use the prior art	Not distinctively different
	Combination of the prior arts	The prior art contains enlightenments on how to combine prior arts	Not distinctively different

 

Table 2 Logic structure after the amendment

 

The Patent Examining Guide in Part IV, Chapter 5, Section 5, as amended, provides that “‘not belong to the prior art’ means that the prior art does not contain designs identical or substantially identical with the design,” and “‘same design’ means an identical or substantively identical design.”

Therefore, “the same invention creation” as described in Article 9 of the amended Patent Law and “belong to the prior art” and “the same design” as described in Article 23 (1) are determinations on the identicalness or substantive identicalness between two designs. These terms are defined from the original legislative intention to ensure a reasonable scope of double patenting for design patent and consistent criteria in invention and utility model, so that Article 23 (1) can be enforced in an objective way and using uniform standards.

 

The amended Patent Examining Guide provides in Part IV, Chapter 5, Section 5.1.1 that “‘identical design means the design at issue is identical with the reference of the same class, having all the essential elements; said elements refer to shape, pattern or color.”

 

It should be noted that to determine “identicalness” between two designs, Article 23 (1) and Article 9 of the amended Patent Law provides for different scopes of subject matter for comparison. The former compares all the design elements of the given design with the corresponding design elements of the comparison design. The latter compares all the design elements of the given design with all the design elements of the comparison design, and the two designs cannot be determined as identical unless all the design elements are identical. The denotation of an “identical” design can have three situations: the given design replaces the materials of the comparison design with common materials; difference between the two designs exists only in product function, internal structure or technical performance; and difference between the two designs exists only in measurement. For example, a touch switch and a sound-controlled switch that have identical design elements can be identical designs. What essential is whether the difference between them results in a change to the overall design.

 

As to the criteria for identical or similar classes of designs, the amended Guide for Patent Examination remains unchanged, following the past standards. It uses the intended uses as a standard, with product name, international design classification and shelf position as reference.

 

The amended Guide for Patent Examination provides in Part IV, Chapter 5, Section 5.1.2 that “the determination of substantially identical designs is restricted to designs of identical or similar classes”; “a given design patent is substantively identical with the comparison design if from the global observation of the two by an ordinary consumer, the difference between the two is limited to: (1) local trivial differences which cannot be perceived with ordinary attention; for example, two window shades designs are different only in the number of the vanes used; (2) a different part which cannot be easily seen or cannot be seen at all, unless evidence shows that such unseen part has a special design noticeable visually to an ordinary consumer; (3) certain design elements which are totally replaced with corresponding design elements usual to the class of the designs; for example, to change a biscuit barrel with color and pattern from a square shape to a cuboid shape; (4) the comparison design being used as a design unit and rearranged with repetition in ways common to the class of the design, or the number of such units being increased/decreased in an arrangement; for example, to rearrange with repetition in rows a seat for cinema use or increase/decrease the number of such seats on a row; or (5) the mirror symmetry of each other.”

The provisions above contain the following meanings: First, the substantively identical determination is global rather than local observation. Second, among the five situations, more than one of them may occur and coexist in a single design, particularly Situation (1) together with any of the other situations. The difference in Situation 1 is far less than that for the similar test in the late Patent Examination Guide. In Situation (3), the “usual” design, as stipulated in Section 2, should mean a design that an ordinary consumer knows well and may remember upon its name.

 

The amended Patent Law provides in Article 23 that to be granted a patent, a design shall be obviously distinctive from the prior art or combination from features of the prior art. How to apply this new provision in patent examination is worth discussing. The following provides an introduction.

 

 

The first situation of “not distinctively different” is provided for in Part IV, Chapter 5, Section 6.1 of the amended Patent Examination Guide. It compares the given design patent separately with a design patent of an identical or similar class. This part of the content has succeeded to part of Section 4. “Determination Rules” in the late Patent Examination Guide. Since measurement change, replacement of materials and only difference in product function, internal structure or technical performance have been moved into the provisions on identical or substantively identical designs, all the other situations are included in the “distinctively different” category. In comparison with the five situations of substantive identicalness, this part only provides for the rules to determine the situations, but does not give the results. The five situations of substantively identical designs are actually accompanied with definite results. If it is not any one of these five situations, a situation can be determined only by using the provisions in Section 6.2. A design which is substantively identical with the prior art has been created with minimal changes to the prior art. Obviously, it should not be granted a patent.

 

In addition, this section clarifies the role of design points in the design summary, that is “the design as referred to in the design points of the summary will not necessarily affect the overall visual effect of the design patent in a distinctive way, nor will it necessarily lead to any distinctive difference between the given design patent and the prior art”. Global observation and determination is the principal rule to govern separate comparison between designs. Design points may not be used to draw a conclusion unless such design points cause a distinctive difference to the overall visual effect.

 

The second situation of “not distinctively different” is provided for in Part IV, Chapter 5, Section 6.2.2, of the amended Patent Examination Guide, that is, (the given design patent is not distinctively different from the prior art) if the given design patent trans-uses the prior art and the two contain identical design features (or if only trivial differences exist between the two). The “trivial difference” here means any difference that is almost unperceivable with ordinary attention. But, the forms of the two should be basically the same. In this situation, the comparison is between the given design patent and the prior art of a class neither identical nor similar with the class of the given design patent. It should be stressed, however, that how to trans-use the prior art should have been enlightened in a prior art of an identical or similar class with the given design patent. As some trans-uses have become usual in the daily life, this section lists four trans-uses which do not require evidentiary support: (1) a design resulted from sole use of geometric shapes (including shapes with only trivial changes to such shapes); (2) a design resulted from sole imitation of the original form of a natural thing or image; (3) a design resulted from sole imitation of the shape, pattern or color, partially or entirely, of a well-known building or work; and (4) a design of toy, ornament or food resulted from trans-use of designs of other classes.

 

It should be noted that the class (or classes) of the given design before and after trans-use should be identical or similar with the class of the enlightening prior art. For example, the prior art transforms a basketball design into a seat design, and the given design patent transforms a keyboard design into a seat design. It cannot be said the prior art teaches on the design. This is because a basketball and the keys of a keyboard are not of identical or similar classes. But, if the prior art transforms a basketball design into a seat design and the given design patent transforms a football design into a seat design, then, it should be that the prior art teaches design patent.

 

In addition, to determine designs resulted from sole use of geometric shapes or sole imitation of natural things or images, the use or imitation should be without any change to the imitation shape or thing. It is not the case if the resulted design contains creative contents, for example, a design made by extracting and refining the features of the imitation shape or thing, which is totally different from the original.

 

The third situation of “not distinctively different” is provided for in Part IV, Chapter 5, Section 6.2.3 of the amended Patent Examination Guide, that is, (the given design patent is not distinctively different from the prior art) if the given design patent is a result of combining prior arts or their features, such prior arts containing parts identical with the corresponding parts of the given design patent (or if only trivial differences exist between the two). Again, the “trivial difference” here means any difference that is almost unperceivable with ordinary attention. Also, the forms of the two should be basically the same. This section provides for two types of prior art combination: piecing up and replacement.

 

Again, how to combine prior arts or their elements should have been enlightened in a prior art of a class identical or similar with that of the given design patent, that is, the class (or classes) of the given design before and after combination should be identical or similar with that of the enlightening prior art. This section lists three known combinations: (1) to piece up more than one prior art of an identical or similar class; (2) to replace a feature of the given design with that of a prior art of an identical or similar class; (3) to piece up or replace a prior shape with a prior pattern or color or any combination thereof. Among them, the first two combinations are restricted to identical or similar classes, and the third combination has not class restrictions.

 

For the trans-uses and combinations above, both Section 6.2.2 and Section 6.2.3 contain a special exception, that is, “except a special visual effect is created in any of the above”. It means that in extremely special situations, “the given design patent achieves a visual effect unexpected from the prior art”. If the given design patent has achieved a special visual effect, it is distinctively different from the prior art or combination of the prior art features.

 

 

The amended Patent Law provides in Article 23 (3) that a patented design shall not conflict with lawful rights that others have obtained earlier. As to the concept of conflict of rights for design patent, academically, a few views have long co-existed, including the infringement view, the competition view, the repetition view and the imminent infringement view. “Conflict” under the Patent Law means a design patent appropriates the subject matter of a prior lawful right without the permission of the owner of such prior lawful right; as a result, once exploited, the design patent will damage the related lawful rights or interest of the owner of such prior lawful right. The phrase “will damage” contains the meaning of “imminent infringement”.

The following analyzes how to determine conflict of rights between design patent and trademark from the perspectives of composition, classification and identicalness/similarity determination.

As stated, according to the imminent infringement view, conflict of rights between design patent and trademark occurs when exploitation of the design patent infringes upon existing trademark right. Therefore, generally speaking, conflict of rights between design patent and an existing trademark cannot be found until and unless the following conditions are satisfied: (1) the class of the design patent is identical or similar with the class of the existing trademark; (2) the design patent contains designs identical or similar with that of the existing trademark; and (3) the design patent is so confusingly similar with the existing mark, as to be likely to mislead relevant public.

 

The rule to determine identical or similar classes between design patent and trademark is whether the use of the trademark and the design patent in commodities or services will cause the relevant public to mistakenly believe that the commodities or services come from a single market player or the market players are connected in some way. The similarity between the commodity class of the trademark and the product class of the design patent is determined on the intended use of the commodity, the raw material components of the commodity, the selling channel and place, the relations between the commodity and its parts (according to the ordinary knowledge of a consumer on how closely the commodity is connected with its parts), the producer and consumer, and the consumer habits. The similarity between the service class of the trademark and the product class of the design patent is determined on how closely the service is connected with the product and how consistent the service is with the product in intended use and general utility, user group, selling channel and selling habit.

 

To determine conflict of rights between a design patent and a trademark, the classes of the trademark and the design may be determined in the following steps: First, determine the class of commodities or services that has been approved to use the trademark, by referencing the International Classification of Goods and Services for the Purposes of Registering Trademarks and Service Marks and the Classification of Similar Goods and Services. Second, determine the intended use and class of products for the design patent, on the basis of the product name, the design summary of the designs and the overall visual effect. Third, consider whether the intended use of the commodities, the raw material components, the selling channel and place, the closeness between the commodity and its parts, the producer and consumer, and the consumer habits may cause the relevant public to mistakenly believe the goods or services originated from a single market player or the market players of the goods or services are connected in some way. In this way, whether the classes of the trademark and the design patent are identical or similar is determined.

 

The identical or similar determination between the trade-related mark of a design patent and a prior trademark should comply with the following rules: First, the subject matter comparison rule. The comparison should be between the prior trademark and what corresponds with the subject matter of the trademark in the design patent, rather than between the entire trademark and the entire design patent. Second, the global observation and distinctive part comparison rule. The global observation should be on the shape, pronunciation and meaning of the trademark, and the ordinary attention of the relevant public; the identical or similar comparison should be on the distinctive parts which generally include the text (the calling function of the text plays an important role in the circulation of commodities), the initials, and the drawing that takes up the main place or the most of the body of the trademark. Third, the separate comparison rule. The comparison should be restricted to the trade-related mark of the design patent and the prior trademark rather than a combination of prior trademarks. Fourth, the objective comparison rule. The comparison should be between the relevant parts of the design patent and the prior trademark, in an objective way, with no regard to the ill intention, if any, of the design patent applicant. Fifth, the popular rule. The popular determination is not restricted to the cross-class protection of famous trademarks. In the determination of conflict of rights between a design patent and a not famous trademark, confusion will be more likely among the consumers if the trademark has certain popularity, as trademarks of different popularity will arouse different awareness among of the consumers.

 

For registered trademarks well-known to the relevant public, the identical or similar comparison may include more classes, if appropriate. Therefore, as a fact finding process, the determination of a registered trademark widely known to the relevant public is needed, in order to define the protection scope of the prior right. In the patent invalidation proceedings, upon the claims and evidence of a party, the Patent Reexamination Board will determine whether a registered trademark is widely known to the relevant public, using the application date of the design patent concerned as the datum and on this basis, whether the comparison will include more classes, if appropriate. Within China, such determination will mainly take into the following factors: the knowledge that the relevant public has on the trademark, how long the trademark has been used, how long and how wide the trademark has been promoted, and the historical record on the protection of the trademark as a Famous Trademark. The Patent Reexamination Board will make the determination on the basis of the evidence that the claimant provides, including sales-related materials, promotion-related materials, and use and protection-related materials.

The determination of conflict of rights between a design patent and a prior copyright should be resolved first by checking the validity copyright and then, whether conflict of rights exists between the two.

 

Validity of copyright includes the competency of ownership and the copyright ability of the subject matter. First, the lawful owner of the copyright can be the author, or any other person, legal entity or other organization which can enjoy copyright under the relevant laws and regulations. Unless proven otherwise, the person, legal entity or other organization so indicated as author on the copyrighted work will be the prima facie author of the work. Second, to be copyrightable, a work must be original. Different from the novelty requirement in the patent law, the originality requirement of the copyright law only requires independent creation rather than by copying it from others. If the patentee proves by evidence that his design patent was independently created, no conflict shall be found, even if it is substantially similar to the copyrighted work.

 

According to the basic line of thinking on imminent infringement, the “contact + substantively identical” test should be applied to the determination of conflict of rights between design patent and prior copyright. If a plane copyrighted work is made into a three-dimensional design or vice versa, the work and the design will still be substantively identical with each other.

 

The Tort Liability Law of the People’s Republic of China, passed December 26, 2009, at the 12^th session of the standing committee of the 11^th National People’s Congress, provides in Article 2 that a party which encroaches upon the civil rights or interests of another shall bear tort liabilities under this law; the “civil rights or interests” here includes such personal and property rights or interests as the right of life, the right of health, the right of name, the right of reputation, the right of honor, the right of portraiture, the right of privacy, the right of marriage by choice, guardianship, ownership, usufruct, security interest, copyright, patent, the right to the exclusive use of trademark, the right of discovery, stock rights, and the right of inheritance. One may find that the Tort Liability Law does not differentiate civil rights from civil interests in their protection scopes and constitutive requirements. This legislative orientation is different from Article 184 of the Civil Code of the Taiwan region and Sections 823 and 826 of the Civil Code of Germany. The same legal spirit is also adopted in Part IV, Chapter 5, Section 7 of the amended Patent Examination Guide, which provides that “lawful rights” means rights or interests that can be enjoyed in accordance the laws of the People’s Republic of China, which remain valid at the application date of the given patent. Lawful rights include trademark rights, copyrights, corporate name rights (including trade name rights), and the right of portraiture and the use of special packages or dresses for brand commodities. That is, what prior rights to conflict with a design patent can be prior lawful rights and interests and are not restricted to trademarks and copyrights listed in Part IV, Chapter 5, Section 7 of the Patent Examination Guide.

 

Conflict of rights between design patent and corporate name. “Corporate name” means the name of an enterprise that has been legally registered with the enterprise registration administration, or the name of an enterprise in a foreign country (region) that is applied commercially in the territory of China. Constitutively, conflict of rights between design patent and corporate name right needs confusion and misunderstanding between the enterprise name involved in the design patent and the subject matter of the prior corporate name right. The constitutive requirements for such conflict of rights are as follows: (1) the popularity of the commodity concerned, with consideration generally on how long and how wide the commodity is sold, how much and how wide the advertisement is made, how the commodity is known among the relevant public, and how the commodity has been protected as a known brand; (2) the special name, package or dress of the commodity, with consideration mainly on whether the name, package or dress of the commodity can identify the source of the commodity; (3) identicalness or similarity between the two, with consideration on whether the identicalness or similarity may cause confusion or misunderstanding among ordinary buyers.

 

Conflict of rights between design patent and use of special names, packages or dresses of a brand commodity. The constitutive requirements are as follows: (1) the popularity of the commodity concerned, with consideration generally on how long and how wide the commodity is sold, how the commodity is known among the relevant public, and how the commodity has been protected as a known brand; (2) the special name, package or dress of the commodity, with consideration mainly on whether such name, package or dress can identify the source of the commodity; (3) similarity between the related part (or parts) of the design patent and the special name, package and/or dress of the commodity, which cause confusion or misunderstanding among ordinary buyers; this is determined mainly on the main parts or the overall image and whether misunderstanding may occur among ordinary buyers when they apply ordinary attention.