Getting To Know Patent Right Verification for Industrial Design from an Invalidation Litigation Case




When Chinese Patent Law was revised in 2008, there is an amendment on the granting terms for industrial design. Both the granting terms and verification for industrial design have become the focus of attention. Below is an invalidation litigation case regarding motors industrial design, which is utilized to introduce the relevant procedures and criterion to invalid industrial design.

The case was filed by the invalid requester, Jaguar Land Rover Public Ltd.C (hereinafter referred to as the invalid requester) on July 25, 2014, against the SUV (Land Wind E32 Model) of the patentee, Jiangling Holdings Limited (hereinafter referred to as the patentee). The request for invalidation was filed to Patent Reexamination Board of CNIPA. Patent Reexamination Board made a decision that the design patent was invalid. Although the Beijing Intellectual Property Court decided to revoke the decision of the appeal after first-instance judgment, the Beijing Higher People's Court finally decided to maintain the decision of invalidation.

This case is one of those “Ten Cases” of Judicial Protection of Beijing Intellectual Property Court. This case defines a judgment standard which would directly influence the verification and validation of Chinese motors industrial design. Besides, this particular judgment standard plays a guiding role in other kind of industrial design case.

  1. Background

1. The filing date of the industrial design patent is 16, November, 2013. The granted date is 23, April, 2014.

2. The invalid requester filed a request of invalidation on 25, July, 2014 as a result of the patent grant does not meet the requirement of Paragraph 1, Article 23 of Patent Law.

  1. Key points of the invalidation office action of Patent Reexamination Board of CNIPA.

1. The panel defines general customers according to Guideline of Examination, in particular, the knowledge and cognition of general customers.

2. The panel believes that general customers could draw the conclusion that there is a huge space for industrial design for motors based on the common sense that they have on the development of styling and industrial design of Hyundai Motors and current situation of industrial design.

3. Conducting an analysis based on the similarity and difference between patent and contrastive design. Drawing a conclusion based on the principle of “Overall Observation and Synthetic Judgment.”

4. Decision of Invalidation: The patent does not meet the requirement of Paragraph 2, Article 23 of Patent Law, so the design patent are invalid.

  1. Key points of the judgment from Beijing Intellectual Property Court.

1. The first-instance court stands with the plaintiff (invalid requester)’s opinion that the conclusion of general customers drawn by defendant decision tends to be general designers and it diverts from the concept of general customers.

2. The first-instance court does not support the plaintiff (invalid requester)’s declaration that the design space of motors that belong to SUV category is relatively small.

3. Whether there exists an evident difference between the patent and contrastive design or not.

The first-instance court indicates that when carrying out an “Overall Observation” of the patent and contrastive design, there is a necessity to pay more attention to those parts that can be easily seen, namely, the basic structure of motors, the proportion relationship between different parts as well as the front part, side part and behind part of motors and etc. When making a “Synthetic Judgment”, there is a necessity to weigh the influence that each part has on the overall visual effect of motors industrial design. Although the proportions of the patent is basically the same with what contrastive design has, namely, the position of side main lines; the angle of inclination of columns; the same proportion shared by outer contour and division of car windows; the interrelationship position of contour of front and behind part is basically the same with each part, there are still different design characteristics between the patent and some parts of contrastive design, and the visual effect through combining the patent and contrastive design impose great influence on the overall structure of SUV, which is enough for general customers to distinguish the visual effect of the patent from contrastive design. Comparing those similarities, the above difference has a more noticeable influence on the visual effect of the patent and contrastive design, so there is an evident difference between the patent and contrastive design.

4. Judgment: Withdrawing the Decision for Invalidation made by Patent Reexamination Board.

  1. Key points of judgment from Beijing Higher People's Court.

1. Beijing Higher Court indicates that the demarcation of general customers should base on the regulations in Guideline of Examination.

2. The second-instance court shows that, as for those have huge design space, it is not easy for general customers to detect the subtle difference; while as for those have small design space, general customers are likely to detect the subtle difference between different designs. Due to the fact that the size of design space is a relative term that is limited by several factors, such as technical function of products, the necessity of adoption of common characteristics of this specific kind of product, the crowdedness of this design and so on, when weighing the design space of characteristics of relevant design, it is necessary to consider above mentioned factors, especially observing the situation of current design.

3. The second-instance court holds the view that “Overall Observation and Synthetic Judgment” are basic method for both industrial design authorization and infringement judgment. The “Overall Observation” starts from the overall industrial design, that means, observing all design characteristics instead of part of the industrial design. As for “Synthetic Judgment”, it concerns an inspection based on the extent of influence that kinds of design characteristics have on the overall industrial design. Considering comprehensively of all factors that can affect the overall visual effect rather than judging by dividing different parts of the design.

The second-instance court shows that the first-instance judgment failed to make a concrete analysis of the influence those above mentioned similarities have on the overall visual effect. In the first-instance judgment, only those differences were generalized and analyzed. Then it comes the conclusion that those two have significant difference due to the huge influence the visual effect difference have on overall industrial design through combining those differences, which is enough for customers to distinguish the overall visual effect of this patent from contrastive designs. Therefore, the method of “Overall Observation and Synthetic Judgment” in the first-instance judgment is inapplicable. The difference between the patent in this case and contrastive design didn’t reach the point of “significant difference”. This patent hasn’t met the requirement to be granted, therefore it should be considered as invalid.

4. Judgment: Withdrawing the administrative judgment made by Beijing Intellectual Property Court.

  1. Key points of this case.

1. Defining the concept of general customers; expounding the recognition ability that general customers have; stating the fact that general customers are different form professional designers and specialists.

2. When comparing the patent with contrastive design, there is a necessity to take design space into consideration.

3. When making a decision on whether or not there is same or similar design, there is a necessity to conduct “Overall Observation and Synthetic Judgment”, in addition, considering both current technic and the extent of influence that it has on the overall visual effect.

The above is a concrete analysis of an invalid motor patent, which can be utilized to demonstrate key considerations of industrial design verification. Hopefully, the above analysis can help others make a judgment on whether or not a certain industrial design meet the patent right verification.

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