*AI-generated translation, for reference only.

[Keywords]

Administrative, Patent administrative case, Invalidation of design patent, Combination inspiration, Internal design features of products, Independent visual effects 

[Case Facts]

Zheng [Redacted] is the patentee of the design patent with the patent number 20173042****.9, titled "Windscreen" (hereinafter referred to as the "Patent"). On April 7, 2022, Guangdong Dongguan Hong [Redacted] Technology Company. (hereinafter referred to as Hong Technology Company.) filed an invalidation request against the Patent with China National Intellectual Property Administration, mainly citing that the Patent does not involve an inventive step (or is not significantly distinguishable) when compared with the combination of Evidence 1 (CN303931****, the authorized publication text of an appearance design patent, disclosing a microphone windscreen cover) and Evidence 2 (CN304240****, the authorized publication text of an appearance design patent, disclosing a microphone windscreen cover). In response, China National Intellectual Property Administration made the 59023rd Invalidation Request Review Decision (hereinafter referred to as the "Defendant's Decision") on October 31, 2022, upholding the validity of the Patent. Subsequently, Hong Technology Company filed a lawsuit with the Beijing Intellectual Property Court, requesting to revoke the Defendant's Decision and ordering China National Intellectual Property Administration to re-make the review decision. Beijing Intellectual Property Court made an administrative judgment on December 27, 2023: (1) Revoke the 59023rd Invalidation Request Review Decision made by China National Intellectual Property Administration; (2) China National Intellectual Property Administration shall re-make the invalidation request review decision. After the judgment was announced, Zheng [REDACTED] Yi appealed, claiming that the internal supporting structure in Evidence 2 is physically and visually inseparable, and the combination of Evidence 2 and Evidence 1 requires overcoming significant obstacles, and there is no combination inspiration between the two. Supreme People's Court made an administrative judgment on December 24, 2024: Reversing the appeal and upholding the original judgment.

[Judge's Opinion]

The main point of dispute in this case is whether this patent has significant differences compared to the combination of evidence 1 and evidence 2. Specifically, whether there is any combination inspiration in evidence 1 and evidence 2.

Paragraph 1 and Paragraph 2, Article 23 of the "Patent Law of the People's Republic of China" (Amended in 2008) stipulates: "The granted patent right for an appearance design shall not be an existing design; nor shall any unit or individual have filed an application for the same appearance design with the State Council Patent Administration Department before the application date, and such application shall be recorded in the patent documents announced after the application date." "The granted patent right for an appearance design shall have significant differences compared to the existing design or the combination of existing design features." Specifically in this case:

First, evidence 1 and evidence 2 pertain to the same type of product and thus meet the prerequisite for combination.

Second, the design features that can be combined are those that, based on the general knowledge level and cognitive ability of consumers, can be naturally distinguished from the overall product design and produces a distinct overall visual impression. They are not limited to design features that can be physically separated from the overall product. That is to say, physical separability is a sufficient condition for determining whether a design feature can be used for combination, but it is not a necessary condition. Therefore, Zheng's claim that the internal supporting structure of evidence 2 cannot be physically separated from the overall product and thus cannot be combined with evidence 1 is not valid.

Third, for the design features located within the product, if the general consumers can produces a distinct overall visual impression by directly observing through the visual sense, and if the original form or slight modifications of these features can be combined to the same position of the same type of products without exceeding the common sense of the general consumers, then such features have the combination inspiration. In this case, although the internal supporting structure of evidence 2 is set within the mesh, due to the certain transparency of the mesh, the general consumers can directly observe the design of the internal supporting structure through the visual sense and can extract it visually from the overall product design, having an independent visual effect. And if it is combined to the outside of the mesh at the center of the outer frame of evidence 1, no large changes or adjustments such as connection, transition, coordination, etc. are required. This combination method does not exceed the knowledge level and cognitive ability of the general consumers. Therefore, whether the internal supporting structure of evidence 2 is set within the mesh or not does not affect the combination with the design features that are visually relatively independent at the same position, that is, evidence 2 and evidence 1 have combination inspiration.

[Judgment Digest]

Generally, consumers, based on their knowledge level and cognitive ability, can naturally distinguish design features with a distinct overall visual impression from the overall product design, even if these features are physically inseparable from the entire product. Such features can be regarded as design features that can be used for combination. The combination method of integrating this design feature, either in its original form or with minor modifications, to the corresponding position of similar products, if it does not exceed the knowledge level and cognitive ability of ordinary consumers, can be deemed to have combination inspiration.

[Corresponding Index]

Paragraph 2, Article 23 of the Patent Law of the People's Republic of China (The version applicable in this case is Article 23(2) of the Patent Law of the People's Republic of China which was amended in 2008)

First Instance: Beijing Intellectual Property Court, (2023) Jing 73 XC 1250 (December 27, 2023)

Second Instance: (2024) SPC IP Admin. Final 314 (December 24, 2024)