Being published on December 21, 2023 and coming into effect on January 20, 2024, the newly revised implementation rules of the China's Patent Law (hereinafter referred to as the "New Rules") have introduced content regarding partial design as its Article 30 and 31, which involves the requirements for pictures or photographs and brief descriptions in partial design patent applications.
Numerous partial design patents have gradually been granted. As the New Rules and new examination guidelines are implemented, the rules for the authorization of partial design patents are becoming increasingly clear. However, as of now, there have been no actions of patent infringement involving partial designs, and no rules for determining the infringement thereof have been issued by the courts. The existing rules for determining infringement of design patents are still within the basic framework established by Articles 8 to 11 of the Judicial Interpretation of Patent Infringement (I).
From the perspective of "harmonizing rules in the authorization and infringement procedures," the focus of this article is on introduction and analysis of the provisions related to partial designs in the New Rules and Guidelines, thus exploring the new changes in enforcement for partial designs.
I. How "Product" Impacts the Scope of Protection
The infringement rule for design patents established by Article 8 of the Judicial Interpretation of Patent Infringement (I) is "Where on the products identical or similar to the products that a patented design is used the alleged design is identical or similar to such the authorized design." Therefore, determining whether the authorized design and the accused infringing design are "the identical or similar" on the product is a prerequisite for determining infringement.
Question 1: What is a "Product"?
The New Rules requires that the brief description of a design should specify the name of the product. The New Guidelines also provide examples of naming partial designs, such as "car’s door," "smartphone’s camera." Contrary to traditional overall designs, partial designs encompass not only the overall product but also focus on the specific section under protection. This distinction means that the part in question might be entirely unique and could stand as a product in its own right. Take, for instance, a "car’s door" or a "smartphone’s camera"; these components could be considered as independent products separate from the car or phone. This leads to a pivotal inquiry: in the realm of partial designs, how should we understand the term "product" within the context of "product name"?
According to section 4.4.1 of chapter 3 in part 1 of the New Guidelines, "when applying for a partial design patent, the product name should specify the part seeking protection and the overall product it belongs to." Furthermore, throughout the design section of the New Guidelines, the term "product" only appears in the context of the overall product. Therefore, from a systematic interpretation perspective, the "product" in partial design only refers to the overall product it is part of, such as "car," "smartphone."
Question 2: How the "Use of Product" Impacts the Scope of Protection
As previously stated, whether the authorized design and the accused infringing design are "the identical or similar" on the product is one of the prerequisite for determining infringement. Article 9 of the Judicial Interpretation of Patent Infringement (I) states, "The trialing people’s court shall determine whether the products in question are identical or similar by examining the uses of the product on which the patented designed is used."
In the era of traditional overall designs, "use" could only refer to the overall design product, i.e., determining the product type based on its use. However, the New Guidelines introduce the concept of "partial use." How to consider this "partial use" in determining product type will inevitably become a controversial topic in the enforcement for partial design.
In assessing the "novelty" of designs, the New Guidelines set forth the following criteria:
For products of the same type, the New Guidelines state, "The same type of products refers to products with exactly the same use. For partial designs, the same type of products refers to those where both the product's use and the partial use are the same."
For products of similar types, the New Guidelines state, "When determining whether products are of a similar type for partial designs, the product's use and the partial use should be considered comprehensively."
In determining whether products are of a similar type, the question of which has more influence - the use of the product or the partial use - arises. However, in the system of partial design, to reflect the substantial role of the concept of "partial use," on one hand, the influence of the use of the whole product indicated by the dashed lines should be appropriately weakened, and on the other hand, the influence of the partial use indicated by solid lines should be strengthened. Specifically, the following two extreme cases should be allowed:
1. The use of the whole product is the same, but the partial use is neither the same nor similar, leading to the determination that the product types in the case are not similar.
2. The use of the whole product is neither the same nor similar, but the partial use is the identical or similar, leading to the determination that the product types in the case are similar.
A typical situation for the first case is the use of different parts on the same whole product. Under the current path of infringement judgment, once the use of the whole product is identified as the same, the investigation into whether the design elements are the identical or similar would follow, and the element of the part's use would be overlooked. Conversely, if the product types are deemed dissimilar due to different uses of the part, infringement can be directly precluded.
For the second case, whether the product types can be deemed the identical or similar based on the identical or similar partial use essentially equals allowing cross-category protection for partial designs, irrespective of the product. Here, the focus should be on the independence of the part from the whole, the conceptual divisibility, and the feasibility of repurposing the part for different product categories.
In light of the New Rules for partial designs, both rights holders and defendants should carefully consider this new element of "partial use," utilizing it appropriately to assert rights or mount an effective defense.
Ⅱ. The Impact of New Design Elements on the Scope of Protection
The New Guidelines continue to adopt the principle of "overall observation and comprehensive judgment", introducing a new design element for partial appearance design, namely the "requirement for the part of the partial appearance design to be protected in terms of its location and/or proportion in the context of the product as a whole". Section 5.1.2 of Chapter 5, Part Four of the New Guidelines stipulates:
"If the general consumer, after observing the overall design of the involved patent and the comparative design, can discern that their differences only pertain to the following scenario, then the involved patent and the comparative design are substantially the same:
...
(6) The difference lies in the routine variation of the location and/or proportion of the part of the partial appearance design that is required to be protected within the entirety of the product."
From the perspective of "coordinating the corresponding rules in the authorization and infringement procedures", how the "substantial sameness" described in the authorization phase maps onto the infringement phase becomes a crucial issue for partial appearance design infringement.
In the infringement phase, regarding the judgment of similarity or near-similarity in appearance designs, Article 11, Clause 3 of the Judicial Interpretation of Patent Infringement (I) stipulates: "Where the overall visual effect of the alleged infringing design is indifferent from that of the authorized design, the trialing people’s court shall conclude that they are identical. Where the overall visual effects of the alleged infringing design and authorized design are not materially different, it will be concluded that they are similar."
In my opinion, during the infringement phase, if the authorized appearance design and the accused infringing design differ only in the "routine variation" of location and/or proportion, they should be deemed "substantially similar", thus constituting similar appearance designs.
More importantly, the existing rules undoubtedly leave room for interpretation and application of "non-routine variations" in location and/or proportion. Determining whether changes in location and/or proportion are "routine" and how to consider the impact of "non-routine variations" on the similarity of appearance designs can become an important point of contention in litigation.
Furthermore, the New Guidelines do not exhaustively list all design elements that need to be considered for partial appearance design. In addition to the aforementioned "location and/or proportion", elements such as "the size of the part" should also be considered when judging whether appearance designs are identical or similar.
Ⅲ. Conclusion
The New Rules and Guidelines on the authorization system for partial appearance design do not completely overturn the existing framework for judging design patent infringement. However, given that partial appearance design only protects parts of a product, in infringement judgments, the new concept of "the partial use" needs to be given significant consideration. In special cases, it should even be acknowledged that the partial use and its contribution to the visual effect deserve protection across product categories.
As for the judgment of identical or similar appearance designs, the principle of overall observation and comprehensive judgment remains effective. This approach should be even more strictly adhered to in partial appearance designs, considering the location and proportion of the part within the whole as one of the design features. The possibility of "non-routine variations" should be acknowledged, and their impact on the overall visual effect should be affirmed. Additionally, an open stance should be maintained regarding the elements of "the relationship between the part and the whole" in the design. It should not be limited to location and proportion; factors such as "the size of the part" should also be considered in the infringement judgment phase.
Over the course of a more than 7 years career at NTD, Mr. Zhang has represented many patent litigation cases for many global companies including Nippon Steel, JDI, Panasonic, Johnson & Johnson, DuPont, Evonik, SVOLT, Great Wall Motors, SAIC Motor and many others. Also, Mr. Zhang provided the clients other services like patent invalidation, free to operation (FTO) assessment and IP strategy consulting. Mr. Zhang also has extensive experience over non-competition cases.
Mr. Zhang has comprehensive background and experience in automation and law. His expertise in technical fields includes green energy materials and devices, intelligent equipment, automobiles, automatic driving, IOT, LCD, AI and industrial design.
