Securing more comprehensive design patent protection

By Martin Meng and Howard Hao, Chang Tsi & Partners
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The design patent protection system in China has some unique advantages, such as low fees and rapid granting of rights. When hearing a design patent infringement case, a judge also faces relatively few difficulties, because he or she has relatively wide discretion in determining “identity” and “similarity”, and such determination is not as “technical” as the comparisons for invention and utility model infringement. Accordingly, the hearing time of a case is relatively short. Furthermore, as long as the evidence is sufficiently prepared, it is usually possible to obtain reasonable compensation.

The purpose of filing for a patent is to protect one’s invention/creation and maintain one’s market competitiveness. This column offers certain suggestions for design filing strategies in light of our experience in design patent litigation.

Solid lines and broken lines

Pursuant to the Patent Law (2008), the Implementing Rules for the Patent Law (2009) and the current Patent Examination Guidelines, design patents in China only protect the entire design of a product, and patents may not be granted for the design of an inseparable part of a product, or of a part that cannot be separately sold or used.

Martin Meng Patent Partner Chang Tsi & Partners
Martin Meng
Patent Partner
Chang Tsi & Partners

However, in developed countries and regions such as the US, many EU countries, Japan, South Korea and Taiwan, design patents for portions are now permitted, i.e. the granting of a design patent for the novel design of a part of a product is permitted.

Taking the US as an example, the authors have often encountered the following issue in practice: in US filings based on priority, an applicant uses only simple lines to express the entirety of the product, other than the design portion expressed by solid lines. For example, in a US design filing for shoes, the major design points lay in the sole and the upper.

Accordingly, a solid line was used to express concretely and in detail the sole and upper, whereas only broken lines were used to show the outline of the vamp, with the existing design elements such as tongue, vamp line pattern and eyelets being completely omitted.

When submitting a China design patent filing based on priority, the most common practice is to convert the broken lines into solid lines. However, there is great risk in this proceeding. Using broken lines to outline the vamp in the US filing is only for the purpose of giving the contextual environment where the sole and upper are located, instead of expressing the genuine vamp design of the product.

Accordingly, the scope of protection that is ultimately secured by the conversion is likely not what the applicant originally desired. A competitor could, based on the design patent, easily circumvent the design patent protection by taking the quintessential parts (copying the design of the sole and upper) while modifying the design of the vamp.

The authors recommend the following:

  1. Removal of the broken lines where possible. The China Patent Office is becoming more and more tolerant of such modifications. For example, soles and uppers do not circulate in the market as independent products, as they are standalone components in the production process. Therefore the China Patent Office currently permits soles and uppers to be the subject of design filings. Where a part is inseparable from the product and an account of this situation cannot be given, the broken lines should still be replaced by solid lines in accordance with regulations;
  2. Simultaneous submission of applications for the product components and the entire product. To secure more exhaustive protection, the author would recommend that design patent filings be submitted simultaneously, for the entire product and for the components where the key design points of a product are located. Where there is no priority, one should endeavour to submit both applications simultaneously on the same day to avoid potential risks.

Convenience of combined filings

After amendment in 2008, the Patent Law permits an applicant to combine multiple similar designs into one filing. This provision is a major step forward in the field of design patents, overcoming the difficulty that the protection for similar designs could not be simultaneously secured.

For example, one of our American clients developed a piece of completely new concept sanitary wear, combining a number of different functions. Its final product design was novel, unique and exquisite, and secured a China design patent. However, not long after the product hit the market, a large variety of similar products also appeared on the market. All of these products copied the client’s design philosophy and applied it to their existing product moulds.

Difference in visual effect

Given that the principle for judging identical or similar designs in China is “overall observation and comprehensive judgment”, although the client’s design patent was essentially identical to that of similar products on the market in terms of design concept and even the relative positioning of components was also essentially identical, there was nevertheless a large difference in visual effect. Accordingly, it was difficult to protect the rights based on the design patent.

Howard Hao Patent Partner Chang Tsi & Partners
Howard Hao
Patent Partner
Chang Tsi & Partners

Accordingly, the author is of the opinion that, when applying for a design patent, one must consider not only the protection of the design of one’s product that is going to be put on the market, but also the manoeuvres that competitors could use to circumvent patent protection.

This kind of anticipatory consideration is crucial, particularly when a new design brings with it a breakthrough design philosophy. In the case in question, the competitors, while copying the design concept, were forced to “cheapen” the design because, based on cost and process, they could not produce products with the same design. If it is possible, at the time of filing, to take suitable precautions against such potential modifications made by competitors, it is possible to protect the new design more effectively.

In this regard, the current patent system offers a real convenience: up to 10 similar designs may be included in one design filing. Combining multiple similar designs in one filing can offer broader protection without increasing filing costs or the annual fees after granting of the rights.

If appropriately used, design patents can effectively protect the creative design achievements of patent holders, while bringing in huge economic benefits. Accordingly, it is imperative to formulate an effective and exhaustive protection strategy at the filing stage.

Martin Meng and Howard Hao are patent partners at Chang Tsi & Partners

Changtsi 001

7/F and 8/F, Tower A, Hundred Island Park

Bei Zhan Bei Jie Street, Xicheng District

Beijing 100044, China

Tel: +86 10 8836 9999

Fax: +86 10 8836 9996

E-mail: martinmeng@changtsi.com

howardhao@changtsi.com

www.changtsi.com

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