Factoring in design space when determining similarity of designs

Introduction
Facts
Decision
Comment

Introduction

Article 23 of the Patent Law provides that a design for which a patent is granted must significantly differ from prior designs. Further, the similarity between a design patent and a prior design must be determined from the perspective of ordinary consumers in the relevant market.

The following steps must be taken when determining the similarity of designs:

• identifying all of the similarities and differences between the design patent and the prior design; and
• assessing the differences to determine whether they notably influence the overall visual effect of the patented product and thus make the design patent significantly different from the prior design, thus meeting the patentability requirement.

As these steps must be taken from the standpoint of ordinary consumers, it is crucial to identify the knowledge and cognitive capability of consumers in the relevant market. To this end, the Supreme People's Court (SPC) uses certain parameters, including so-called 'design space'.

In a retrial ruling concerning the administrative suit over an invalidation decision of a design patent,(1) the SPC – for the first time – defined 'design space' as the leeway a designer has when creating a specific design for a product.

Not until the promulgation of Interpretation (II) of the SPC on Several Issues concerning the Application of Law in the Trial of Patent Infringement Dispute Cases (the SPC Interpretation), which came into force on 1 April 2016, had the court formally introduced the concept of design space in the legislation.

Article 14 of the SPC Interpretation provides that:

A people's court shall, when determining an ordinary consumer's knowledge and cognitive capability in terms of the design, take into account the design space of the products of the same or similar category in terms of the patented design, at the time when the alleged infringing act occurs. Where there is much design space, the people's court may determine that in general an ordinary consumer is unlikely to notice the minor differences between different designs. Where there is not much design space, the people's court may determine that in general an ordinary consumer is likely to notice the minor differences between different designs.

In other words, if the product category has considerable design space, the difference between the design patent and the prior design has a relatively small effect on the overall visual appearance, making the design patent substantially similar to the prior design and thus unpatentable.

This article analyses the application of the aforesaid provisions in a recent design patent administrative suit.

Facts

Martell Corp initiated an invalidation administrative proceeding against a design patent ZL201430195369.1 titled "wine bottle", which is owned by a Chinese natural person. In the first-instance proceeding, the Beijing IP Court found the patent not significantly different from the prior design and revoked the invalidation decision in favour of the patentee.

The patent design and prior design share the following features:

• both are for hyaline glass bottles comprising a bottle stopper, bottle mouth, bottle neck and bottle body;
• the bottle stopper, bottle mouth and bottle neck are of the same shape; and
• the bottle body has in its front part an oblique plane extending from the bottle neck all the way down to the middle and lower part of the bottle body, and the shapes of the oblique planes are almost identical.

The main differences between the two designs are as follows:

• the shapes of the bottle bodies are different – the bottle body of the patent design has vertical ridges. However, the bottle body of prior design is a smooth curved surface except for the oblique plane; and
• the bottom of the patent design is a regular octagon, but the bottom of the prior art is a circle.

The patent design and the prior design are both designs of bottles, mainly used to contain liquid for storage, transportation and sale. Other than meeting the basic function, there is still considerate design space left for the shape of the bottle. For example, wine bottles – as well as brandy bottles incorporating the patent design which are actually used by the patentee – vary in shape, style and colour.

Decision

In light of the considerable design space of products, the first-instance court found it unlikely that the aforesaid differences would significantly influence the overall visual appearance of the product because:

• multiple vertical ridges on the bottle body can be clearly shown only in the top and bottom perspective views, but not from other perspectives, thus the difference does not produce a notable visual effect compared with the turning surface of the prior design; and
• it is highly unlikely that an ordinary consumer would pay attention to the bottom of the bottle during use and the bottom of the bottle does not produce a noticeable visual effect for an ordinary consumer.

The court therefore concluded that the design patent, which had not been significantly different from the prior design, was unpatentable.

Comment

Factoring in design space when ascertaining the similarity of designs could improve evaluation objectivity. In fact, in the Provisions of the SPC on Several Issues in the Trials of Administrative Cases involving the Granting and Affirmation of Patents (Draft), the SPC proposes the following parameters for assessing design space:

• the product's function and use;
• the design density of prior designs;
• conventional designs;
• the necessary provisions of any laws or administrative regulations; and
• national or industry technology standards.

The draft, which was released for public comment on 1 June 2018, is still in the pipeline. It remains to be seen how these parameters are evaluated in the final text.

For further information on this topic please contact Hewen Zhao at Wanhuida Intellectual Property by telephone (+86 10 6892 1000) or email (zhaohewen@wanhuida.com). The Wanhuida Intellectual Property website can be accessed at www.wanhuida.com.

Endnotes

(1) SPC Retrial Administrative Judgment 5 (2010).