Introduction
Design patents can easily be obtained in China. It takes just the submission of drawings or photographs and a brief description of the design; there is no need for substantial examination. Thus, unless the design is the obvious reproduction of something already widely known (in which case the examiner can refuse to grant the 'abnormal' application), a design patent can easily be obtained.
However, this does not mean that precautions need not be taken, particularly before filing an application.
Two recent high-profile cases involving foreign companies provide an opportunity to reflect on such precautions.
In Land Rover v Land Wind (June 2016), Jaguar Land Rover Limited had its critical patent weapon against Land Wind declared invalid by the Patent Re-examination Board. In Baili v Apple (May 2016), the Beijing Intellectual Property Office ruled that Apple's iPhone 6 and iPhone 6 Plus infringed Shenzhen Baili's prior design patent.
As these predicaments could have been avoided, this update offers practical advice on how innovation-driven businesses should tailor their design patent filing strategies in order to guarantee protection.
Confidential designs and early filing
In Land Rover, Jaguar Land Rover filed a design application for its Evoque product (Figure 1) on November 24 2011. However, the design failed to meet the novelty requirement, as it had been publicly exhibited at the Guangzhou International Automobile Exhibition in December 2010. This constituted lack of novelty, which is an unavoidable ground for invalidation. According to Article 23 of the Patent Law, a design must not be identical or similar to "an existing design that is known to the public both domestically and abroad before the date of application". As a result, Land Rover lost its critical patent weapon in the fight against its copycat product, the Land Wind X7 (Figure 2).
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Apple Inc filed a design application in September 2014, before launching its iPhone 6 and iPhone 6 Plus (Figure 3). Unfortunately, Baili's design patent (Figure 4) had been filed in January 2014. Therefore, Baili was in an ideal position to claim patent infringement against the iPhone 6 and iPhone 6 Plus.
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Apple had presumably finalised a first draft of its iPhone 6 some time before the final design was complete and it was ready to launch the product. If Apple had immediately filed a design application based on the first draft and kept it unpublished, or had registered a copyright based on the first draft, it would have been able to defend itself against Baili on the basis of its first design application and the outcome could have been different.
It is therefore advisable to file design applications immediately after the first draft of the product design has been completed. Early filing enhances the stability of the design patent: not only does it provide a strong right against the infringer, it also provides protection against others working on a similar design application that try to file first and use the right against the original creator.
Single application for similar designs
Unlike in Europe and the United States, partial designs cannot be filed under the Chinese Patent Law. Many new designs that are filed are based on already protected designs and make only slight modifications to the product. In Europe and the United States, the new or amended element of the product is drawn in solid lines, while the remaining part of the product is drawn in broken lines and serves as a disclaimer (no protection is claimed for this part). However, this is impossible in China at present and is envisaged only in the draft revision of the law. In order to avoid this problem, it is recommended that similar designs of the overall product containing the partial novel design feature be created and filed in a single design application. This filing strategy makes it difficult for potential infringers to design around the patent to avoid being sued.
The partial design issue is particularly serious in the automobile industry. Car designers tend to follow earlier design elements and modify and improve only parts of the product. Since partial design protection is unavailable in China, it is recommended that independent applications exclusively covering the modified part (eg, the bumper or bonnet) be filed each time that this part can be regarded as an independent product.
There are a number of judicial precedents illustrating this matter. For example, in 2015 Honda lost its CR-V case (Civil Judgment (2015), Min Shen Zi, 3167) against automobile manufacturer Shuang Huan. After two instances and a retrial before the Supreme People's Court, the Supreme People's Court finally dismissed Honda's infringement claim by finding that Shuang Huan's product did not fall within the protection scope of Honda's CR-V automobile design patent. Instead, the court awarded Shuang Huan tens of millions of renminbi yuan in damages in its counterclaim against Honda. However, in another case (Civil Judgment (2010), Gao Min Zhong Zi, 1746 and 2556), Honda obtained compensation from Shuang Huan based on its bumper design patent (which was upheld by the Beijing High Court).
Products-in-set and component products
For some types of product, a products-in-set or component product application can be filed.
These types of patent apply to products which belong to the same class and are customarily sold or used together, thereby sharing the same design concept. For example, a combination sofa set consists of several independent sofas that can be combined to form a set, and the design application for the set can therefore be filed as a products-in-set or component product patent. The same applies for jewellery and tea sets.
The protection scope for a products-in-set patent is defined in a Supreme People's Court judicial interpretation dated April 1 2016 (Interpretations (II) of the Supreme People's Court on Several Issues regarding Application of Law during Trial of Cases related to Patent Infringement Disputes), which states that each design in a set should be deemed an independent product. In this case, an opposing product will be found to infringe if it is identical or similar to one design in the set. For a component product, an opposing product will be found to infringe only if it reproduces every design covered by the patent.
For the types of product discussed above, a products-in-set patent appears to provide broader protection than a component product patent.
For further information on this topic please contact Gu Xueni at Wan Hui Da Law Firm & Intellectual Property Agency by telephone (+86 10 6892 1000) or email ([email protected]). The Wan Hui Da Law Firm & Intellectual Property Agency website can be accessed at www.wanhuida.com.
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