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The Extent of the Protection Conferred by a Design Patent Shall be Determined by the Drawing(s)



Article 136, Paragraph 2 of the current Patent Act stipulates the basic principle for explaining the extent of the protection conferred by a design patent: "The extent of the protection conferred by a design patent shall be determined by the drawing(s), and the description may be considered as a reference." As design patents are visual creations that protect the appearance of objects, the extent of the protection thereof shall be determined by the content disclosed by their drawings, which are different from the content recorded in text of the claims for invention patents or utility model patents. In addition, considering that the applicant may use the text of the description to facilitate description of the content disclosed by the drawings, one may therefore refer to the description when explaining the extent of the protection conferred by a design patent so as to understand the extent of protection requested by the drawings.

 

In the 2019 Ming Zhuan Su Zi No. 6 civil judgment of the Intellectual Property Court, the court decided the grounds claimed by the defendant for revoking the plaintiff’s design patent. In this case, the plaintiff is the patentee of the D192283 design patent, “Skin Cleansing Device” (hereinafter referred to as "the patent-in-litigation"). The plaintiff alleged that the "Acne Fighter" (hereinafter referred to as "the product-in-litigation") sold by the defendant has the same appearance and shape as that of the patent-in-litigation, and has actually infringed upon the right of the patent-in-litigation. Nevertheless, using the M505299 utility model patent (hereinafter referred to as "the defendant’s evidence 1") filed prior to the published filing date of the patent-in-litigation, the defendant claimed that there were grounds for revoking the patent-in-litigation. The court therefore made a decision on the validity of the patent-in-litigation based on its merit according to Article 16, Paragraph 1 and 2 of the Intellectual Property Case Adjudication Act.

 

With regard to the analysis of the extent of the protection conferred by the patent-in-litigation, the court expressed in its judgment that the extent of the protection conferred by a design patent is composed of the "article" and "appearance" thereof. The article of the patent-in-litigation shall be identified as a“Skin Cleansing Device” for acne removal and introduction of nutrient solution according to the approved and published drawings of the patent-in-litigation and by considering the title of design and the purpose of article in the description as a reference. The appearance of the patent-in-litigation shall be determined as "the overall shape formed by the views of the drawings" according to the approved and published drawings of the patent-in-litigation and by considering the description as a reference. Although the patent-in-litigation states in its design description that "specifically the front and rear outer surfaces of the shell are made up of several diamond facets," the drawings do not disclose the corresponding design features, and the said statement does not serve to elucidate the design. It is difficult to conjecture what the appearance and shape described in the said statement are. Therefore, the extent of the protection conferred by the patent-in-litigation is mainly determined by the drawings (referred to in Article 136, Paragraph 2 of the Patent Act), excluding the description of the appearance which is not disclosed in the patent-in-litigation, namely the statement that "specifically the front and rear outer surfaces of the shell are made up of several diamond facets."

 

Based on the above analysis of the extent of the protection conferred by the patent-in-litigation, the court held that the main shape features of patent-in-litigation are similar to the second figure of the defendant’s evidence 1, wherein the difference lies only in the detail modifications of the back shell and the middle cylinder decoration strips. As the said detail modifications are only the creations which can be easily conceived by a person ordinarily skilled in the art or any designer based on prior art, the slight differences resulting from the said modification fail to produce a distinct visual effect on the overall appearance of the patent-in-litigation, and the defendant’s evidence 1 is therefore sufficient to prove that patent-in-litigation is not creative.

 

According to the aforesaid arguments, the extent of the protection conferred by a design patent shall be determined by the drawing(s), and the description of the design patent can only elucidate the extent of the protection conferred by a design patent. With regard to the description for design patents, Part 3, Chapter 1 of the Patent Examination Guidelines published on August 15, 2016 stipulates: "The description of design serves to elucidate description of shapes, patterns, colors, or any combination thereof, including design features and matters related to the design disclosed by the drawings so that the design can be understood and carried out by a person ordinarily skilled in the art of the design.” In this case, the description of the appearance recorded in the design description of the patent-in-litigation does not correspondingly disclose the drawings of the patent-in-litigation, the content of the design description neither serves to elucidate description of shape, patterns, colors or any combination thereof in the patent-in-litigation nor includes design features and matters related to the design disclosed by the drawings. Therefore in the analysis of the extent of protection conferred by the patent-in-litigation in this case, the court ruled that the extent of the protection conferred by the patent-in-litigation shall be determined by the drawing(s), excluding the description of appearance recorded in the design description.
 



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