How to submit key design points when filing for a design patent

Pursuant to article 59 of the Patent Law, the brief description of a design has an interpretive function in respect of the scope of protection of the design patent. So in what manner should it be written up in the filing process to be of the most benefit to the rights holder? This column will attempt an analysis of this, and give some recommendations.

Invalidation procedure

Pursuant to the definition in the Patent Examination Guidelines, the term “key design points” means the shape or pattern of a product or a combination thereof, or the combination of colour and shape and/or pattern, or a part thereof, that distinguishes the patented design from existing designs. Key design points are the difference between a patented design and existing designs and reflect the innovations of the patented design.

Pursuant to article 23 of the Patent Law, to determine whether a patent may be granted for a design, it has to be examined to see whether it is innovative as compared to existing designs and for the degree of such innovativeness. Accordingly, key design points that highlight the innovation of the patented design theoretically should have an impact on the determination of whether a patent satisfies the conditions for approval. If the key design points are overly minor, the granting of a patent will be negatively affected.

However, the Patent Examination Guidelines at the same time specify that “the design indicated by the key design points in the brief description of a design need not necessarily have a marked effect on the overall visual impact of the design and need not necessarily lead to there being a marked difference between the patent in question and existing designs”.