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PRC Supreme People’s Court: Clarified Design Patent Infringement Determination

PRC Supreme People’s Court: Clarified Design Patent Infringement Determination

In May 2011, the PRC Supreme Court ruled on some important Design Patent issues. With multiple cases of Design Patent infringement before the court, the Ministry decided they needed to issue some common guidelines around what exactly constitutes infringement on a patented design. The results of this ruling are still being discussed, but there will certainly be some impacts to the way we all think about Design Patents and their ability to protect our IP in China. As is always the case, it’s easier to understand though examples (provided in the article), but in general the ruling is more or less consistent with rulings on similar issues before EU courts in the recent past. The NAI Team reviewed this ruling and believes the court has allowed for a bit more latitude on second generation designers than perhaps some less liberal courts. The definition of “significant design element” is still quite subjective. All in all a good read and indication of how the PRC Supreme Court may rule on such issues in the near future.

The Preamble

In the past few years, Chinese Courts have witnessed several cases involving infringement of patent designs in the automobile industry. Some of the prominent ones have been Fiat Panda v. Great Wall Peri, Honda v. Hebei Shuanghuan and Neoplan V.Beijing Zhongtong Xinghua Automobile Selling Co., Ltd. These cases have been considered prominent because of the stupendous values claimed as damages. Furthermore, they also have been considered hallmark representatives of the flexibility of patent laws and associated rules for establishing patent infringement claims.

Rules and Regulations

Basically, to be able to prove a case of infringement, the design of the accused should be substantially identical to the patented design. The same should appear apparent to a normal beholder. Additionally, the beholder should also be able to make a comprehensive deduction with respect to the similarities. This should be done on the basis of the specific features of each design, keeping the overall visual impact in perspective. Simply put, a common viewer should be able to identify the specific similarities between the two in order to prove a case of infringement.

References pertaining to prior arts and the patented design are also compared during establishment of invalidity claims. Since the patented design is not subjected to any examination prior to being granted, comparisons do not occur during the prosecution and filing process for the concerned patent. According to the guidelines updated in 2010, the common viewer stands as the ultimate judge in order to distinguish the similarities. If he does not find the similarities blatant enough to have a prominent impact on the complete visual effect, a case of infringement cannot be proved.

However, the entire inspection procedure lacks factual clarity. For example, neither the Patent Examination Guidelines nor the Patent Judicial Interpretation provides substantial inputs on the factors that should be considered for the so-called comprehensive judgement. All we have for reference is an imaginary common beholder and his abstract views. The entire vagueness of the process is one of the core challenges encountered by the patent law.

However, the entire judgement process has undergone significant changes in the recent past. The popular theory of today is that consideration of the overall visual impact is essentially a flawed concept. Even if minor changes are introduced in the design or several sectional changes are brought in, they are not likely to affect to the overall design perception. Therefore, distinguishing one design from the other, by a normal beholder, would still be immensely difficult. This would be especially true in industries when overall product configurations and appearances are part of common product features. In such cases, overall design appearances would easily outweigh sectional changes.

This caused several confusions and misleading conclusions, especially in the car industry. For instance, when a new car model is introduced into the market, the overall appearance might seem similar to an existing patented design. However, the new model might have incorporated certain distinct features, such as tailgate designs and window contouring. In this case, it would not be a proven infringement. However, a common beholder might find it quite similar.

Some Recent Developments

There have been some recent developments where established protocols upheld by lower courts have been challenged or set up for review by the Supreme People’s Court. A case in point would be the one between Honda and The Patent Re-examination Board of the State Intellectual Property Office. The backdrop dates back to 2003 when Hebei Shuanghuan was accused by Honda for infringing its patented design while introducing the S-RV model. What followed through the years was a series of litigations and counter litigations. This was the first case in which the court examined the concept of “comprehensive judgement” in a different light. In a landmark judgement statement, it was mentioned that when cars belonging to the same category adopt each other’s designs as a whole, it might not have a substantial effect on the overall visual impact, as perceived by the common beholder. Instead, distinct sectional changes, such as headlight designs, back and lateral view, would have more of an effect on the overall design perception. Based on these facts, the court finally ruled that existence of unique features were enough to distinguish prior designs from the patented ones. Therefore, in such cases, infringement cannot be proved and the designs are considered to be distinguishable from each other.

This judgement would undoubtedly set precedence for similar cases in future. However, it is still quite difficult to ascertain as to which party would stand to benefit from it, one who has been accused of infringement or the one who owns the patent. Every case would be unique in itself and would depend on the specific evidences involved in each. Apart from the accused design and the patented one, the original art form would also have to be taken into account. The stability of the patented design would be maintained if sectional changes amount to distinct features, when compared to prior arts. Similarly, when a rival manufacturer introduces significant structural changes, it may not amount to infringement at all.

Note: The preceding is a summary of an article found though our research, and is provided here with editorial comment for members only. Please see the full article at the following link for full original conent.

The New Asia Innovation Team