As Patent Law looms, how are partial designs shaping the debate on infringement

The new Patent Law, which will come into force on 1 June 2021, provides new regulations on the term of design rights, content of those rights, and priority. The new law can be seen as legal preparations made during the process of adjusting China’s intellectual property regime to bring it in line with the system built around the 1925 Hague Agreement Concerning the International Registration of Industrial Designs.

Among the detailed amendments, the provisions providing protection for partial designs are particularly noteworthy.

The international mainstream approach for design protection that has been adopted by most of the well-developed countries or regions such as Europe, the United States, and Japan, include partial designs within the scope of patent protection. The underlying philosophy of this approach lies in the fact that industrial design there has been well developed, which leaves reduced space for innovation. At the same time, the effect and strength of protection for partial innovation offered by the protection mechanism for overall designs are insufficient. Among the prescriptive legal rules that have taken shape in these countries and regions, ones that regulate the scope of protection and the criteria for determining infringement are of particular importance.

This article provides an introduction to the key elements, with an attempt at providing influenced parties with useful ideas about how to ensure their legitimate rights and interests in China.

Scope of protection

At present, no judicial interpretations or implementing rules concerning partial designs have been issued. The China National Intellectual Property Administration defines partial design as innovative design made to a certain part of a product. As to what constitutes a part, i.e. whether a part needs to be severable, different viewpoints exist. Some scholars ague that a partial design should not include a part that is severable, e.g. an independent part or component of a product does not fall within the scope of protection of partial designs. Other scholars argue that both severable and non-severable parts should be included.

The European Union’s community design regulation defines a design as “the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation.” The term is defined likewise in the United States and Japan.

Given that the practical motivations for this amendment are to enhance the competitiveness of Chinese products overseas and reduce the procedural and economic costs of protecting legitimate rights abroad, the authors doubt that the differential treatment for parts and components that are severable or can exist independently would make much contribution.

If non-severability is required as a prerequisite for a partial design, it is unlikely that the objectives of this amendment can be achieved; not to mention the additional burden for both applicants and examiners of a review stage to determine whether or not a part is in fact severable. In this respect, adopting the international mainstream principles, particularly the undifferentiated protection afforded to severable and non-severable parts, will greatly eliminate such issues.

Furthermore, the importance of partial designs will only increase given the growing share of value in a given product represented by graphical user interfaces, or GUIs. Based on US experience, not only can GUIs be viewed as partial designs for an associated product, but so can their individual elements, such as as pointers, icons, windows and transitional and animated effects — and their combinations. It is therefore growing more difficult to establish accurate criteria for severability. More detailed guidelines and interpretations are needed.

Criteria for determining infringement

In view of the new kind of empowerment accorded by partial designs, some scholars suggest that since it is not necessary for a design patent to be severable, or to be saleable or useable separately, protection will not be limited by the product or components as a whole. It is likely that this philosophy would give rise to a broad — and perhaps, inappropriate — protection for partial designs through interpretation of regulations and judicial practice.

The authors would argue that, given the agreement at the logic level among the approaches to determine whether given activity constitutes patent or trademark infringement or unfair competition, what should be valuated is still the “distinctiveness”.

It is the product incorporating the partial design as well as other design elements, rather than adistinct detail, that should be examined when determining whether there infringement exists. Therefore, the inappropriate expansion of patent right due to completely separating the design from the product could be prevented to some extent.

As the US Supreme Court noted in Gorham v White, while it may be useful to compare each feature, the ultimate question is whether the design as a whole appears “substantially the same to what it termed an ordinary observer: “If the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.”It can be anticipated that the implementation of the new law will have a relatively major impact on GUI design, making up for the insufficient protection of GUI designs caused by the requirements of existing determinations of infringement with regard to products. For general industrial designs other than GUIs, only adaptive adjustments in the specific comparison process, rather than disruptive change to the principle of “overall observation plus comprehensive judgment” currently used in determining infringement of designs will occur.

Such adaptive adjustments will mainly be manifested as follows:

(1) the defining function of the product description in the right granting process leaning toward the principle of “used only for reference and classification” established in the EU’s community design regulation, with the defining function of the product itself being greatly reduced;

(2) the intensity of the attention for judging the subject will shift from the average consumer to professional design and industry-sensitive personnel, that is to say to “informed users”; and

(3) the weight of the visual effect of a partial design on the product as a whole will increase and, without breaking away from application scenarios, greatly weaken the contribution of other design elements to the distinctiveness.

The legislative significance of introducing partial designs mainly lies in accelerating the pace towards the Hague system, boost the legal protection for enterprises’ innovations in design and manufacturing. The various details relating to the granting criteria and the determination of infringement still await the issuance of further interpretations and guidelines.

Chen Yuxuan and Li Mingtao are partners at Yuanhe Partners