Assessing design patent infringement generally involves two questions: whether the accused product’s design is identical or similar to the patented design, and whether the accused product and the product covered by the patent are of identical or similar types. These are central and difficult issues in judicial practice. This article examines several related points.
1. Define the scope accurately and apply overall comparison, observation of principal parts and comprehensive assessment
1.1 Interpreting the patent drawings or photographs
Under the Chinese Patent Law, a design application requires drawings or photographs of the design, rather than a specification or claims. The scope of protection is therefore determined by the product design shown in those drawings or photographs, rather than by a verbal description. Nevertheless, in litigation it is necessary to describe the design’s features in words.
A design protected by patent law must be original. Its original elements constitute its creative points, while other elements may limit the interpretation of its scope. Reasonably identifying and interpreting the original elements is therefore central to infringement assessment. The following methods may be used.
(1) Excluding well-known prior designs
Most designs improve upon existing designs. When defining the scope of protection, the well-known parts should first be distinguished and excluded so that the original contribution can be identified. The design outline submitted with the application is an important basis for assessing originality.
(2) Excluding elements that are not part of the external design
Internal product components and elements such as product dimensions, the inherent colour of a material and the underlying meaning of a pattern should be excluded from the scope because they do not themselves provide the external aesthetic appearance.
(3) Excluding purely functional design
A design concerns the ornamental or artistic appearance of an industrial product. Features dictated by the product’s function should therefore be distinguished from those contributing to its aesthetic appearance. A feature that has both decorative and functional characteristics should not, however, be excluded solely for that reason.
(4) Considering the available design freedom
Where a type of product offers greater design freedom, the scope of protection should be interpreted more broadly. Where design freedom is limited, for example for automobiles or refrigerators, it should be interpreted more narrowly.
1.2 Overall comparison, observation of principal parts and comprehensive assessment
A design consists of the shape or pattern of a product, their combination, or colour combined with shape and pattern, producing an overall aesthetic impression. Comparing designs therefore requires an assessment of their overall appearance, rather than isolated parts.
At the same time, very few designs are wholly different from previously published designs. Most are improvements to existing designs, and those distinguishing improvements reflect the proprietor’s original contribution and underpin novelty. Infringement should therefore be assessed through overall comparison, observation of principal parts and comprehensive judgment.
More specifically, infringement requires: (1) the original principal parts of the designs to be identical or similar; and (2) those identical or similar principal parts to constitute the main part of the designs, or the products’ overall external designs to be identical or similar.
2. Assess product and design similarity through the eyes of an ordinary consumer
Judgments about design identity and similarity depend greatly on perception and subjective factors. Differences in knowledge and cognitive ability may produce different conclusions, so the person whose perspective is used matters.
Judicial practice adopts the perspective of an ordinary consumer, consistently with the purpose of design protection. Here, “ordinary consumer” does not mean the public generally. Under the Examination Guidelines, the ordinary consumer has common knowledge of designs and customary design methods for identical or similar products before the patent’s filing date.
3. Assess the type of product comprehensively with reference to the International Classification for Industrial Designs
A design is protected in connection with a product. Infringement assessment should therefore first determine whether the accused product is of the same type as the product covered by the design patent. If they are not of the same type, further design infringement comparison is unnecessary.
The International Classification for Industrial Designs classifies products according to function. This differs from classifications used in industry and commerce and from those arising from consumers’ habits. Treating the Classification as the sole standard can therefore produce conclusions detached from reality. Conversely, abandoning it entirely would sever the connection between examination and infringement standards and undermine the stability of the design system.
In practice, the assessment should take into account consumers’ customary classifications, the products’ functions, uses and materials, and the International Classification for Industrial Designs.
