*AI-generated translation, for reference only.

Keywords: Administrative; patent-related administrative case; reexamination of rejection of a design patent application; new design with aesthetic appeal; decorative design feature; functional design feature; consumer

[Case Facts]

Danish [REDACTED] Company was the applicant for the design patent application titled "Syringe Label," Application No. 20183051****.0 (hereinafter referred to as the Application). With respect to the Application, the China National Intellectual Property Administration (CNIPA) made Reexamination Request Examination Decision No. 299531 on March 14, 2022 (hereinafter referred to as the contested decision), upholding the decision made by its original examination department to reject the Application. The contested decision held that, according to the common knowledge of ordinary consumers, the design shape in the Application was a geometric shape commonly seen in the relevant field, and that the pattern was merely a simple arrangement of scales and a barcode and did not form a new design pattern. Therefore, the design was determined to be a design composed only of geometric shapes and patterns commonly seen in the field to which the product belonged, was not a new design, and did not comply with Article 2, Paragraph 4 of the Patent Law of the People's Republic of China. Danish [REDACTED] Company was dissatisfied and filed a lawsuit with the Beijing Intellectual Property Court, requesting that the contested decision be revoked and that CNIPA be ordered to make a new examination decision.

On January 29, 2023, the Beijing Intellectual Property Court rendered Administrative Judgment No. (2022) Jing 73 Xing Chu 16001, dismissing the claims of Danish [REDACTED] Company. Danish [REDACTED] Company was dissatisfied and filed an appeal. On December 24, 2024, the Supreme People's Court rendered Administrative Judgment No. (2023) SPC IP Administrative Final 408, dismissing the appeal and upholding the original judgment.

[Judge's Opinion]

The focus of dispute in this case was whether Design 1 and Design 7 of the Application should be granted design patents.

Article 2, Paragraph 4 of the Patent Law provides: "A design means any new design of the shape, pattern, or their combination, or the combination of color with shape or pattern, of a product, which is aesthetically pleasing and fit for industrial application." Accordingly, for a design to be granted a patent, the following four requirements must be simultaneously satisfied:

(1) its carrier must be a product; (2) its composition must be the shape, pattern, or their combination of the product, or the combination of color with shape or pattern; (3) it can be applied to a specific product carrier and can be applied industrially; and (4) it belongs to a new design solution with aesthetic appeal. Therefore, being "aesthetically pleasing" is a necessary condition for a design to be granted a patent.

The requirement of being "aesthetically pleasing" means that, in addition to functional design features, the design solution must also have decorative design features, or design features with aesthetic significance. Whether a design solution has decorative design features or design features with aesthetic significance should be determined by reference to the knowledge level and cognitive ability of ordinary consumers. If, in the view of ordinary consumers, the design features constituting the design solution are determined solely by specific functions, and they would not pay attention to whether the design has aesthetic appeal, then the design solution does not satisfy the requirement of being "aesthetically pleasing."

In this case, the product involved in the Application was a "syringe label." The contents sought to be protected by Design 1 and Design 7 were composed of a combination of scales and a barcode. The brief description of the Application also recorded that the design points of the design product lay in the pattern; the design made visible the position at which blood collection should stop, and the black line indicated that sufficient blood had been obtained. Theoretically, there could be multiple choices for the layout of the scales and barcode, as well as the position, length, thickness, and other aspects of the scales. Therefore, Design 1 and Design 7 had the possibility of possessing decorative design features. In fact, however, they merely adopted customary patterns for expressing scales and a barcode. Under such circumstances, ordinary consumers would focus only on the functions of the scale and barcode in indicating capacity and identifying product information, and would not pay attention to the design solution from the perspective of aesthetic appeal. Therefore, it could be determined that Design 1 and Design 7 possessed only functional design features and did not constitute new designs that were "aesthetically pleasing." They should not be granted design patents in accordance with law.

[Judgment Digest]

Being "aesthetically pleasing" is one of the statutory requirements for a design to be granted a patent. Where a design has only functional design features and lacks decorative design features or design features with aesthetic significance, it cannot be granted a patent in accordance with law. Whether a design is "aesthetically pleasing" should be determined by reference to the knowledge level and cognitive ability of ordinary consumers. If, in the view of ordinary consumers, the design features constituting the design are determined solely by specific functions, and they would not pay attention to whether the design has aesthetic appeal, then the design does not belong to a new design that is "aesthetically pleasing."

[Related Index]

Article 2, Paragraph 4 of the Patent Law of the People's Republic of China as amended in 2020. Article 2, Paragraph 4 of the Patent Law of the People's Republic of China as amended in 2008 applied in this case.

First instance: Administrative Judgment No. (2022) Jing 73 Xing Chu 16001 rendered by the Beijing Intellectual Property Court on January 29, 2023.

Second instance: Administrative Judgment No. (2023) SPC IP Administrative Final 408 rendered by the Supreme People's Court on December 24, 2024.