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Comparison of a Design Patent (Previously Known as New Design Patent) and Accused Product Should Be Based on the Design as a Whole



Judging infringement of a design patent (known as “new design patent” before amendment of the Patent Act in November 2011) involves the steps “interpretation of patent claims,” “comparison of interpreted patent claims and accused products,” etc.  When comparing the scope of a design patent with an accused product, the court should adopt the viewpoint of persons skilled in the art to interpret the content of the accused product, and then adopt the viewpoint of common consumers, taking into consideration shape, pattern and color as disclosed by the drawings of the design patent as a whole; relevant provisions can be found in Part 2, Section 3, Chapter 2, Volume 2 of the Patent Infringement Assessment Guidelines.  Thus, incorrect interpretation of the scope of the accused product can impact the conclusion reached in the judgment on the visual design as a whole.
 
In Judgment No.: 2015-Tai-Shang-1775 recently issued by the Supreme Court, the IP Court’s second-instance judgment was revoked because the Supreme Court thought that the conclusion of patent infringement had been affected by incorrect interpretation of the accused product.  For instance, the Supreme Court thought that interpretation of the scope of the accused product (in this case, a motorbike) had been tainted by the fact that the patentee had removed the “luggage basket” before comparing the scope of the design patent and the accused product.  In addition, the Supreme Court noted that when comparing the design patent and the accused product, the IP Court had not taken the pattern and the color disclosed by the accused product into consideration, which affected the judgment on the design as a whole.
 
When judging the visual effect of a design as a whole, the design of the main part of the design patent should be taken into consideration before the secondary parts.  However, if shape, pattern or color is excluded from consideration and the reasons for such exclusion are not provided, or if any novel features of the accused product are excluded from consideration, the judgment based on the comparison may be deemed incorrect.


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