CHANG TSI
Insights
The patent at issue is Design Patent No. 201630366880.4, titled “Road Traffic Signal Light,” owned by Sichuan Ke XX Industrial Co., Ltd. (“Ke Company”). The application was filed on August 4, 2016, and the patent was granted on March 15, 2017.
On November 29, 2021, Sichuan Hua XX Intelligent Transportation Technology Co., Ltd. (“Hua Company”) filed an invalidation request, arguing that the patent lacked “no significant difference” from (i) the combination of Evidence 1 and Evidence 2, and (ii) the combination of Evidence 1 and Evidence 5, and therefore did not comply with Article 23, Paragraph 2 of the 2008 Patent Law. Evidence 5 was a notarized document consisting of three SolidWorks design draft screenshots posted on WeChat Moments.
Invalidation Stage: CNIPA issued Invalidation Decision No. 56930, upholding the validity of the patent. CNIPA’s core reasoning was that the correlation among the three images in Evidence 5, and whether they related to the same product, could not be confirmed, and that the images failed to fully disclose the product’s overall appearance, and therefore could not serve as a basis for comparison.
First Instance (Beijing IP Court): The Beijing IP Court vacated CNIPA’s decision and ordered CNIPA to issue a new decision. The court held that Evidence 5 could serve as a valid basis for comparison, and that the patent lacked significant difference from the combination of the front/back design shown in Evidence 1 and the peripheral decorative rim shown in Evidence 5.
Second Instance (Supreme People’s Court): The SPC dismissed the appeal and affirmed the first-instance judgment, thereby upholding the conclusion that Evidence 5 could be used for combination-based comparison and that CNIPA must reconsider the invalidation request.
The dispute on appeal centered on whether the design features shown in Evidence 5 could be used in combination-based comparison to assess whether the patent lacked significant difference. The Court’s analysis proceeded on two levels:
(A) Whether the WeChat Moments Content Qualifies as Prior Design Disclosed Before the Filing Date
The SPC clarified that the “known to the public” standard under Article 23, Paragraph 4 of the Patent Law does not require that the content have actually been widely known; it is sufficient that the content was in a state accessible to an unspecified group of persons who wished to access it. Whether content posted in a permission-gated online space such as WeChat Moments constitutes prior design should be assessed holistically, considering the platform’s publication mechanism, the poster’s circumstances, the substance of the content, and the primary purpose of that Moments account. Where the invalidation petitioner shows that the account is used predominantly for commercial purposes, a preliminary inference may be drawn that its content was accessible to an unspecified public - unless the patentee rebuts this by showing the content was not actually disclosed or was subject to a confidentiality obligation with specific recipients.
In this case, the account in question had continuously posted promotional content related to Ke Company both before and after the filing date, supporting an inference of commercial publicity intent and a close relationship between the account and Ke Company. Ke Company failed to produce effective rebuttal evidence, so the SPC found that the content in Evidence 5 constituted prior design.
(B) Whether the Design Features in Evidence 5 Could Be Used for Combination-Based Comparison
The SPC articulated two key rules:
1. Standard for determining whether multiple images relate to the same product: This should be assessed holistically based on all evidence in the record and the parties’ relative capacity to produce evidence. Where the images or materials submitted by the party bearing the burden corroborate one another (here, the three images displayed the same project name and identical navigation-panel positions within the same design software), and the party with the ability to rebut fails to produce evidence sufficient to overturn that showing, the court may find that the images relate to the same product.
2. Whether combination-based comparison requires that the overall appearance of the product be fully disclosed: The SPC expressly rejected the position that a design feature can only be used in combination if the overall appearance of its underlying product has been completely disclosed. Instead, the applicable standard is: so long as an ordinary consumer, based on the content already disclosed, can determine the product category to which the design feature belongs and its relative positional relationship within the overall design, that feature may be used in combination-based comparison - full reconstruction of the product’s overall appearance is not required. Here, although Evidence 5 did not fully disclose the signal light’s overall appearance, the images themselves, together with other signal-light-related content on the same Moments account, were sufficient for an ordinary consumer to identify the product category and the position of the specific feature at issue (the peripheral decorative rim), which itself possessed a relatively independent visual effect. Accordingly, that feature could properly be used in the combination.
The SPC further held that the clearer images of Evidence 5 submitted at the first-instance stage merely reinforced the evidentiary weight of a notarized document (photocopy) already submitted during the invalidation proceeding, and did not introduce new disputed facts; accordingly, the first-instance court’s acceptance of that evidence was proper.
This case offers several important takeaways for design patent prosecution, invalidation, and infringement litigation practice:
1. Lower threshold for admitting social media evidence of public disclosure. Content posted on platforms such as WeChat Moments may be found to be “known to the public” even where access requires permission (e.g., adding the poster as a contact), so long as the account can be shown to serve a commercial promotional purpose and to be closely connected to the relevant party. Companies should be aware that routine business content posted on Moments accounts, official accounts, or similar channels may later be used as prior design evidence in patent applications or invalidation proceedings, and should manage confidentiality and the timing of new product disclosures accordingly.
2. Partial design features and incomplete products can serve as a basis for combination. This case confirms that combination of prior design features does not require disclosure of the “overall appearance of a complete product” - component parts, partial designs, and even recognizable portions of design drafts with an independent visual effect may be used to assess significant difference. This means invalidation petitioners should broaden their prior art search to include partial images, design drafts, and component-level disclosures, not just complete-product images. Patentees, in turn, should avoid relying on the simple defense that “the evidence does not show a complete product,” and should instead focus their rebuttal on substantive issues such as the sufficiency of evidence establishing product identity and the identifiability of the feature’s positional relationship.
3. The assessment of “significant difference” should return to the “ordinary consumer” standard of holistic observation and comparison of key portions. The SPC reaffirmed that the touchstone for significant-difference analysis is whether an ordinary consumer can, based on disclosed content, identify the design feature and its positional relationship - not whether the evidence is formally complete. This has direct implications for search strategy in invalidation proceedings and for drafting infringement comparison opinions: the emphasis should be on the identifiability and independent visual effect of the feature itself and its relative position within the overall design, rather than on whether the evidence depicts the full product.
4. Boundaries of the evidence-reinforcement rule. The Court confirmed that new evidence submitted during litigation to reinforce the evidentiary weight of evidence already accepted at the invalidation stage (such as a clearer version of the same notarized document) may be admitted. This underscores the importance of submitting complete original materials as early as possible during invalidation proceedings, to avoid disputes arising from indistinct evidence, while also providing a doctrinal basis for reasonable evidentiary reinforcement at the litigation stage.
