In design patent infringement lawsuits, it is very common that the defendant initiates invalidation attack against the plaintiff’s asserted design patent, and meanwhile applies non-infringement defense. If the sued product also has a design patent which has survived invalidation attack after comparison with the prior design (the plaintiff’s asserted design patent) and the CNIPO already decided that the defendant’s design is not similar to the plaintiff’s asserted design, the chances of success of defendant’s defense will be significantly increased. This article is focusing on the defense strategy under the premise that the defendant’s sued product has design patent, through investigating into the existing cases and trying to conclude some useful information for the enterprises’ reference in making intellectual property portfolio and defending the design patent infringement lawsuit in China.
1. The Patent Law of the P.R.C.
Article 2, Paragraph 4: The term “design” refers to any new design of a product's overall or local shape, pattern or combination thereof, or combination of color and shape or pattern, which is fit for industrial application while having a sense of esthetics.
Article 64, Paragraph 2: For the design patent right, the scope of protection shall be confined to the design of the product as shown in the pictures or photographs, and the brief description may be used to explain the said design as shown in the pictures or photographs.
2. Interpretations of the Supreme People's Court Concerning Certain Issues on the Application of Law for the Trial of Cases on Disputes over Infringement on Patent Rights
Article 8: Where the products in the same or similar products of patented design adopts the design the same as or similar to the granted design patent, the people's court shall hold that the sued infringing design falls within the protection scope of design patent right as prescribed in Article 59, Paragraph 2, of the Patent Law.
Article 10: The people's court shall, based on the knowledge level and cognitive ability of ordinary consumers of the products of patented design, judge whether the design is the same or similar.
Article 11: When determining whether the design is the same or similar, the people's court shall conduct comprehensive judgment on the basis of the design features of the granted design patent and the sued infringing design as well as the overall visual effect of the design; the design features mainly determined by technical functions and such features of the products as the material and internal structure that do not have influence on the overall visual effect shall not be taken into consideration.
The following circumstances generally have greater influence on the overall visual effect of the industrial design:
(1) Compared with other parts, the parts that are more liable to the direct observation in the normal use of products;
(2) Compared with other design features of the granted design patent, the design features that distinguish the granted design patent from the existing design.
Where there is no difference in the overall visual effect between the sued infringing design and the granted design patent, the people's court shall hold that the two designs are the same; where there is no substantial difference in the overall visual effect, the two designs shall be held to be similar.
Case 1. Zhongshan Ligao Electric Appliance Co., Ltd. (referred to as “Ligao Company”) v. Jianfa Electrical Products (Shenzhen) Co., Ltd. (referred to as Jianfa Company) and Wu Hongbin patent infringement dispute, second instance, (2005) Yue Gao Fa Min San Zhong Zi No. 239
Summary of the court ruling: The legal representative of Ligao Company had applied a design patent for the sued product, the date of filing was March 14, 2003, the date of granting was October 8, 2003, the patent number is ZL03320680.5. Ligao Company claimed that the products manufactured and sold by it implemented its own design patent, which is neither the same as nor similar to the asserted patent of Jianfa Company. During the second instance of this case, Beijing No.1 Intermediate Court issued (2005) Yi Zhong Zhi Xing Chu Zi No. 768 Administrative Judgment, which dismissed the No. 7027 Invalidation Decision issued by Patent Re-examination Board of the CNIPA and sustained the design patent ZL03320680.5 of the legal representative of Ligao Company. This administrative judgment recognized that the design patent ZL03320680.5 is neither the same as, nor similar to Jianfa Company’s asserted design patent. In addition, compared with the sued product and Jianfa Company’s design patent, there are several significant differences from the front view, thus the two parties’ designs are neither identical with nor similar to each other according to the criteria of judging similarity of design patent. Because the design of Ligao Company’s sued product is neither identical nor similar to Jianfa Company’s asserted design patent, Ligao Company does not commit patent infringement.
Case 2. Good Child Children Products Co., Ltd. (referred to as “Good Child Company”) v. Tengzhou Aosen Furniture Co., Ltd. (referred to as “Aosen Company”) design patent infringement dispute, second instance, (2015) Su Zhi Min Zhong Zi No. 00264.
Summary of the court ruling: According to No. 27601 Invalidation Decision, the design patent of Aosen Company has seven major differences in comparison with the asserted design patent. Considering that the sued product of Aosen is identical to Aosen’s design patent, the differences recognized by No. 27601 invalidation decision are the differences between the sued product and the asserted patent. Therefore, the design of the sued product is nether identical with nor similar to the sued design patent, which does not fall into the protection scope of the sued patent, and does not belong to infringing product.
It should be specifically indicated that, when judging infringement, this court referred to the invalidation decision made by Patent Re-examination, which does not mean that the result of invalidation decision is the basis of infringement judgment. The judgment of this court is based on the existing laws and regulations and the differences recognized by the invalidation decision, and the comprehensive consideration of the contribution rate of the asserted patent to the prior designs, as well as the degree of the reference and avoidance of the sued product from the asserted patent. In conclusion, the invalidation decisions of the asserted patent and Aosen’s patent are just one of the important evidences in judging infringement, this court still needs to make the review and judge the probative force according to the Patent Law, the Civil Procedural Law and the rules of evidence.
Case 3. XX Electronical Appliance Co., Ltd. v. XX Technical Development Co., Ltd. design patent infringement, first instance, (2021) Jin 03 Zhi Min Chu No. xxx (note: the judgment has not been published)
In this case, the defendant submitted an invalidation decision issued by CNIPA, and claimed that the design of the sued product is identical to the target patent in the invalidation decision. In this invalidation decision, the prior design is the asserted patent of plaintiff, and the CNIPA decided that the target patent is neither identical nor similar to the asserted patent.
In the judgement of this case, the court did not directly comment on the relationship between the target patent and the asserted product, nor did the court directly comment on the influence of the invalidation decision to this patent infringement civil case, it is quite clear that when judging the infringement, the court referred to the core opinion of the invalidation decision, and made the decision that the design of the sued product is neither identical nor similar to the asserted patent, after comprehensively considered the cognition ability of the ordinary consumers, the space of design, and conducted the overall observation and comparison.
III. Conclusion and Recommendations
I. If the sued product has design patent, the favorable invalidation decision regarding this design patent is important evidence for judging infringement.
Considering that the criteria of judging similarity in design patent invalidation cases and design patent infringement cases are the same, i.e., overall observation and comprehensive judgment, in the design patent infringement lawsuits, if the sued product of defendant happed to has a design patent, and this design patent had survived invalidation attack by comparing with the asserted design patent, this invalidation decision can be served as important evidence to support the defense of on-infringement. If the defendant can prove that the design of the sued product is identical to its design patent, and the invalidation decision had recognized that its design patent is neither identical nor similar to the asserted patent, the chances of success for the defendant to make non-infringement defense is relatively high.
2. In order to avoid patent infringement, before entering into the market, it is recommended that an infringement assessment of a new design being conducted.
To avoid the potential damages caused to an entity in respect of reputation and property because of involving into infringement lawsuit initiated by others, before entering into the market, we recommend the enterprise conducting an infringement assessment in advance. The infringement assessment should include analysis of the possibility of infringement against others’ trademark, copyright, patent, and/or distinctive trade dress with certain reputation in China. If there are any risks of infringement, the enterprise should take actions to revise the design and try to minimize the risks of infringement.
Even if the product bearing the new design is recognized as infringement against other’s IP rights, the infringement assessment report conducted in advance is an useful evidence to prove that the entity does not have bad faith in committing the infringement, which is helpful to avoid the risks of being claimed the punitive compensation.
3. Establish the Intellectual Property Portfolio in China in time.
When an enterprise is planning a new industrial design, we recommend it establishing its Intellectual Property Portfolio in China in a timely manner, including but not limited to, file design patents (and/or invention or utility patents), conduct copyright registration, and/or file trademark application, to comprehensively protect its new design, and smooth its enforcement of the IP rights when the new design is copied by competitors in China. If the product bearing the new design is sued by others, and the specific design patent survived the patent invalidation attack, the entity can make full use of the favorable invalidation decision to support its non-infringement defense, or use the prior registered/applied/granted IP rights to support prior use defense.