*AI-generated translation, for reference only.

Keywords: Administrative; Invalidation of Design Patent Right; Prior Design Features; Combination Inspiration; General Consumer

Case Facts

Wang [REDACTED]sheng is the patentee of a design patent with Patent No. 201530157998.1, entitled "Telescopic Leveling Staff." On June 8, 2021, [REDACTED] Equipment Company filed a request for invalidation against the patent right. In response, on December 29, 2021, the China National Intellectual Property Administration rendered Invalidation Request Examination Decision No. 53335, holding that there was no obvious combination inspiration in the prior designs and deciding to maintain the validity of the patent right. Dissatisfied, [REDACTED] Equipment Company filed a lawsuit with the Beijing Intellectual Property Court, requesting revocation of the contested decision and an order directing the China National Intellectual Property Administration to render a new decision.

On September 26, 2022, the Beijing Intellectual Property Court rendered Administrative Judgment (2022) Jing 73 Xing Chu No. 5800: (1) revoking Invalidation Request Examination Decision No. 53335 rendered by the China National Intellectual Property Administration; and (2) ordering the China National Intellectual Property Administration to render a new examination decision. Both the China National Intellectual Property Administration and Wang [REDACTED]sheng appealed, and on September 18, 2023, the Supreme People's Court rendered Administrative Judgment (2022) SPC IP Admin. Final 821, revoking Administrative Judgment (2022) Jing 73 Xing Chu No. 5800 of the Beijing Intellectual Property Court and dismissing the claims of [REDACTED] Equipment Company.

Judge's Opinion

The court's effective adjudication held that: before comparing a combination of prior design features with the design for which the patent right was granted, it should be determined whether a "combination inspiration" exists, that is, whether a general consumer would readily think of combining the prior design features. Because the designs protected by China's Patent Law are new designs that are rich in aesthetic appeal and suitable for industrial application, and are designs of the appearance of industrial products rather than mere artistic designs, being the application of aesthetic principles to the appearance of products, a design must therefore be based on a product and carried on a specific product. Although, when comparing a combination of prior design features with the patented design, only the appearance of the combined product is taken as the object of judgment, without considering non-design factors such as product function, the premise is that the combined design features must be attached to a product that is coordinated and unified in both appearance and function; otherwise, it would become a mere artistic design divorced from any product. If substantial changes and adjustments, such as connecting and echoing or transitioning and coordinating, are required to make the combined product a coordinated and unified whole, this is generally regarded as exceeding the knowledge level and cognitive ability of a general consumer, and a general consumer would find it difficult to think of combining such design features. Where the parties have not adduced evidence proving that the prior designs disclosed such a manner of combination, the people's court should find that no combination inspiration exists in the prior designs.

In this case, with respect to the two manners of evidence combination proposed by [REDACTED] Equipment Company: First, as to the combination of Evidence 1 and Evidence 2. After the hook at the top of Evidence 1 is removed, there is no corresponding design of a rotating shaft and a folding rule that could be used to connect with Evidence 2, so a connecting part would need to be newly designed and added; at the same time, Evidence 1 also does not provide the space for the original folding rule to rotate around the shaft, so that portion would need to be altered as well, and these new design changes do not constitute "minor changes." Second, as to the combination of Evidence 3 and Evidence 4. Superimposing a segment of a folding rule onto Evidence 3, which is a complete telescopic rule having no other structure, where [REDACTED] Equipment Company has not adduced evidence proving that such a combination technique exists in the prior designs, it is difficult to find that a general consumer would readily think of such a combination technique. At the same time, as stated above, the combination of Evidence 3 and Evidence 4 still requires substantial design adjustments and changes.

Judgment Digest

Where combining prior design features to form the patented design requires substantial changes and adjustments, such as connecting and echoing or transitioning and coordinating, in order to combine them into a whole that is coordinated and unified in both appearance and function, it may generally be considered that the combination process exceeds the knowledge level and cognitive ability of a general consumer, who would find it difficult to think of combining such design features; in such circumstances, it may be found that no such combination inspiration exists in the prior designs.

Related Index

Article 23, Paragraph 2 of the Patent Law of the People's Republic of China (the provision applied in this case is Article 23, Paragraph 2 of the Patent Law of the People's Republic of China that came into force on October 1, 2009)

Article 20 of the Provisions of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Administrative Cases Involving the Granting and Confirmation of Patent Rights (I)

First Instance: Administrative Judgment (2022) Jing 73 Xing Chu No. 5800 of the Beijing Intellectual Property Court (September 26, 2022)

Second Instance: Administrative Judgment (2022) SPC IP Admin. Final 821 of the Supreme People's Court (September 18, 2023)