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Discussion of the Filing Strategy and Protection Scope of Products in Set and Combination Product in Design Patent

28

APR

2021

In a design patent application, we often encounter that the claimed design comprises two or more parts. In the case of this type of claimed product design, it involves the problem of products in set and combination product in the product design. So, what are products in set and combination product? What is the difference between their filing strategies? And what should we do to appropriately apply for protection?

In this regard, the author will discuss, based on examples, the differences between the two in terms of the meanings, the filing requirements, and the protection scope thereof.

I. What are products in set and combination product?

1. What is products in set?

In accordance with the definition in the Chinese Patent Law, products in set means two or more products belonging to the same class, but independent from each other. The design concept for each of the products is the same. Each product has its own independent value of use while the combination of them reflects collective value of use.

For example, tableware in set, including bowls, plates, spoons, forks and other products constitutes a products in set. These products belong to the same class, and each of the products in set can be used independently while the combination of them reflects collective value of use.

As can be seen, three constitutive requirements for the products in set comprise:

1. Each product belonging to the same class;

2. Sold or used in set;

3. The design concept for the products being the same.

All of the above are the essential requirements and none is dispensable.

2. What is combination product?

In accordance with the definition in the
Chinese Patent Law, combination product refers to a single product consisting of a number of components. It could be divided into assembled product with only one option of assembly, combination product needless of assembly or assembled product with more than one option of assembly.

For example, poker cards, a plug-in toy, an electronic kettle assembly comprising an electronic kettle and a heater.

As can be seen from the above definition, products in set always consists of two or more products, while each product has its own independent value of use and can be sold independently with its own independent conditions for being patented. However, no matter how many components the combination product is composed, it is essentially one product. This difference can be regarded as the fundamental difference between the products in set and the combination product, and other differences are also closely related to it.

II. Difference between the products in set and the combination products in application

We have understood the difference between the products in set and the combination product, so what is the difference between the two in preparation of filing materials?

According to the relevant provisions of the Patent Law, in the application for the products in set, Arabic numerals shall be marked before the titles of the views of each product with the word "item" placed before the numerals.

For example, in the products in set of wine bottle and wine box, the wine bottle is the item 1, and the perspective view thereof can be named as "item 1, perspective view".

In the application of the combination product, in respect of the assembled product with only one option of assembly, only views showing the state of combination shall be submitted, and there is no need to submit the complete six-side views for each independent component; in respect of the combination product needless of assembly or assembled product with more than one option of assembly, views showing each component shall be submitted, and Arabic numerals shall be marked before the titles of the views of each component with the word "component" placed before the numerals.

For example, in various plug-in toys that children like, the relationship between the components is not unique, and one of the components can be named as "component 1, perspective view".

It should be emphasized that the design patent of products in set is essentially consisting of a plurality of products, that is to say, each product that constitutes the products in set should meet the requirements of granting. If one design of one product fails to comply with the requirements, the patent application for this design shall not be granted a patent right. However, for the design patent application of the combination product, it only requires the overall combination product to fufuil the requirements of granting.

In addition, it should be noted that design patent application of products in set shall not include similar designs of one or more products, for the reason that the design of the combination product is essentially only one product design, while both the similar design and the design of products in set include a plurality of product designs. Thus, in order to distinguish between two different multiple product designs, and to avoid confusion caused by the presence of products in set design and a similar product design in the same design patent application, similar designs for products are not allowed in design patent application of products in set. For example, a design patent application of products in set including dinner cup and saucer shall not involve two or more similar designs related to said cup and saucer.

However, the similar designs may involve combination product. For example, multiple motorcycle designs each consisting of a frame, a seat and other components may be submitted as similar designs in one patent application.

III. Difference between the products in set and the combination product in protection scope

In respect of the design patent right obtained for products in set and the combination product, do they have the same protection scope?

As can be seen from the definition of products in set and combination product in the Patent Law, products in set is essentially consisting of multiple products that can fulfill requirements for granting. Therefore, in respect of the patent obtained for products in set, in addition to the overall appearance of the products in set, the appearance of each product that constitutes the products in set can also be fully protected. In the determination of infringement, if the accused product only imitates the design of one of the products, the accused product is still determined as an infringement product. In other words, for products in set that has been patented, each product that constitutes the products in set can independently claim its own right.

Therefore, although products in set is granted to obtain one design patent, it shares the same protection as the multiple design patents obtained by applying for each of the products in set.

Then, how is the protection scope of the combination product determined?

In accordance with the definition in the Chinese Patent Law, combination product is essentially one product, and thus the protection scope thereof shall be determined differently from products in set. For an assembled product with only one option of assembly, such as the combination product comprising an electronic kettle and a heater, judgment of the protection scope thereof shall be based on the overall appearance of the product of the electronic kettle and the heater, rather than on the appearance of specific components. For combination product needless of assembly or assembled product with more than one option of assembly, such as the poker cards and plug-in toy listed above, judgment of the protection scope thereof shall be based on the overall appearance of all the individual components that constitute the combination product.

Therefore, for patented combination product, each of the components cannot claim its right independently like each of the products in set, but shall claim by the overall appearance of the combination product constituted by each component. In the determination of infringement, if the accused infringing product only imitates one or a part of the combination product, it does not constitute the infringement. For example, the determination of infringement for patented plug-in puzzle toys of different shapes shall be based on the overall appearance of the plug-in puzzle toy. If the accused product is merely the same as or similar to one of the components, it shall not be judged as infringement of the design patent of the combination product.

In addition, for further discussion, in the invalidation procedure of the patent right of products in set, if a certain item or several items of products in set are considered to be the same or substantially the same as the prior design object, the patent may be declared to be partially invalid, and the remaining part is maintained to be valid. However, in the invalidation procedure of the patent right of combination product, only when the entire combination product is the same or substantially the same as the prior design object, will the patent be declared invalid, and completely invalid. The entire patent right will not be affected due to certain components in the combination product being the same as the prior design object.

Based on the above analysis, we can confirm that under the same condition, the patent protection scope of products in set is much larger than that of combination product, and the patent right obtained for design of the products in set is more stable.

About the Firm

Unitalen Attorneys at Law
Address 7th Floor, Scitech Place, No. 22 Jian Guo Men Wai Ave., Beijing, 100004 P. R. China
Tel 86-10-5920 8888
Fax 86-10-5920 8588
Email mail@unitalen.com
Link www.unitalen.com

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