The Supreme People's Court pointed out in an administrative appeal case that, if a patented design merely employs usual design methods to aggregate or replace design features from different parts of the same reference design applied to the product of the same category, resulting in a substantially identical design with only slight differences in overall visual effect and without a unique visual effect, it can generally be considered that the patented design is not significantly different from the reference design.
The article relates to a decision on examination of a request for invalidation, and a brief summary of the prosecution procedure is as follows:
Natural person H is the patentee of the design patent for a "Screwdriver Storage Box" (hereinafter referred to as "the present patent"). Factory A filed a request for invalidation with the China National Intellectual Property Administration (CNIPA), asserting that the present patent is not significantly different as compared with the combination of Exhibit 1 and other references.
The CNIPA issued a decision on the examination of the request for invalidation, upholding the validity of the present patent. The CNIPA held that, the present patent is significantly different from Exhibit 1 in the segmented shapes of corresponding respective parts and the overall design due to differences in the position of the handle-receiving cavity and the shape and position of the bit-receiving cavity, and the front side is designed as a part drawing the attention of a normal consumer, thus the above differences between the present patent and Exhibit 1 notably influence the overall visual effect, and then the two are significantly different. Furthermore, there is no evidence that the above differences constitute a common design for the product of this category.
Factory A, dissatisfied with the decision, filed a lawsuit with the court of first instance, requesting the revocation of the contested decision and an order for the CNIPA to re-issue an examination decision.
The court of first instance rendered the first-instance administrative judgment: dismissing Factory A’s claims. The court of first instance held that the difference between the present patent and Exhibit 1 lies in a part drawing more attention of a normal consumer, resulting in greater differences in visual effect of the shapes of various parts and the overall design. Such difference does not constitute a common design for the product of this category.
Factory A, dissatisfied with the decision, filed an appeal.
The Supreme People's Court issued a final administrative judgment: revoking the administrative judgment of the first-instance court and the contested decision, and ordering the CNIPA to re-issue a decision on the examination of the request for invalidation filed by Factory A.
In its effective judgment, the Supreme People's Court held that the key issue in the second instance of this case was whether the present patent is significantly different from the combination of prior design features. The main differences between the present patent and Exhibit 1 lie in the position of the strip-shaped handle-receiving cavity as well as the shape, quantity, and position of the bit-receiving cavity. The shape, size, and quantity of the strip-shaped handle-receiving cavity and the bit-receiving cavity are mainly determined by the shape, size, and quantity of the handle and bits they accommodate. The handle-receiving cavity and the bit-receiving cavity cannot be designed independently of the shape, size, and quantity of the handle and bits. The grooves for accommodating the handle and bits are basic design features in a screwdriver tool storage box. Given that Exhibit 1 has disclosed the design of the grooves for accommodating the handle and bits, for a normal consumer, based on the overall design inspiration provided by Exhibit 1, and using conventional design methods of centering and symmetry, it is easily conceivable to move the entire handle-receiving cavity to a central position and arranging the bit-receiving cavities evenly from left to right and from top to bottom, symmetrically distributed on both sides of the handle-receiving cavity, according to the shape, size, and quantity of the bit grooves. Therefore, by applying conventional design methods based on Exhibit 1, that is, aggregating or replacing the design features of different parts of Exhibit 1 applied to the product of the same category, a design that is substantially identical to the present patent with only minor differences in the overall visual effect and lacks a unique visual effect can be obtained. Therefore, the present patent is not significantly different from the combination of Exhibit 1 and usual designs.
Through the aforementioned judgment, the Supreme People's Court has elucidated the criteria for determining whether a patented design is significantly different from prior designs, which has important guiding significance.
(2022) Zui Gao Fa Zhi Xing Zhong No. 567
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