I. Background

Since the revision of the Patent Examination Guidelines in 2023, the China National Intellectual Property Administration (CNIPA) has strengthened its preliminary examination of design patents by adding a more stringent review of whether, “compared with an existing design or a combination of existing designs, the claimed design shall have a significant difference.” The examination standard has clearly become stricter.

In invalidation proceedings for design patents, the lack of a “significant difference” has long been one of the main grounds for invalidation since the implementation of the third amendment to the Patent Law of the P.R.C in 2009. How to determine “significant difference” is directly related to the stability of patent rights.

Recently, the Supreme People’s Court of the P.R.C, in a design patent invalidation administrative litigation case [Case No.: (2024) SPC IP Final 1005], gave a concentrated exposition on the criteria for such determination, providing important reference for future judicial practice and patent application strategies.

II. Judicial Rules in This Case

In this case, the Court first clarified the general steps for determining whether a design has a significant difference:

1. Determination of Existing Design Features That Can Be Combined

Existing design features that can be used for combination should be design elements that are physically or visually distinguishable and have relatively independent visual effects. Arbitrary segmentation of points, lines, or surfaces generally does not constitute combinable existing design features.

2. Significant Differences Need Not Enter the Combination-Inspiration Analysis

Before making a combination comparison, it is generally necessary to determine whether there is “combination inspiration” between design features. However, if the design features of the patent in question differ greatly from the corresponding features of an existing design that could be used for combination, and such differences have a significant impact on the overall visual effect, there is no need to assess whether the two have combination inspiration. One can directly conclude that the patent in question has a significant difference compared with the combination of existing design features.

3. Standards and Application of Combination Inspiration

Before combining different existing design features, it must first be determined whether combination inspiration exists - i.e., whether an ordinary consumer could naturally combine these features into a product that appears overall coordinated and unified in function, without requiring substantial adjustments or transitional design.
If the combination requires significant structural changes, shape modifications, or style coordination, it exceeds the ability of an ordinary consumer and does not constitute combination inspiration.

III. Implications for Practice

1. Prosecution

(1) Prior Art Search and Evaluation Before Filing: Before submitting a design patent application, it is recommended to conduct a comprehensive patentability search and, using the judgment framework of this case, analyze whether the design differences from existing designs can form a significant difference in overall visual effect to improve grant prospects.

(2) Responding to Office Actions / Rejection Decisions: If the CNIPA rejects the application for lacking significant difference, it is important to analyze whether the examiner’s comparison follows principles such as overall observation and prominent-part analysis. If not, promptly file a request for reexamination or initiate administrative litigation to secure rights.

2. Enforcement

(1) Patent Evaluation Report (PER) Before Enforcement: Before initiating enforcement actions such as online takedown, administrative adjudication, or civil litigation, obtaining a positive PER is essential. If the conclusion of PER is unfavorable, apply for a review using the judgment criteria of this case to strive for a conclusion favorable to patent stability.

(2) Strategy in Invalidation Cases: Whether acting as the patentee or the invalidation petitioner, one should be adept at applying the judgment rules in this case, arguing from perspectives such as determination of existing design features that can be combined, significant differences need not enter the combination-inspiration analysis, standards and application of combination inspiration to support one’s stance.

Conclusion

The determination of “significant difference” for design patents is a core issue not only in the examination phase but also in invalidation and infringement litigation. Fully understanding and applying the latest judicial standards can effectively improve the likelihood of patent prosecution and put one in a favorable position in maintaining rights stability and developing litigation strategies.