China update

I attended a seminar on re-examination and invalidation in China on 14th October, hosted by Linda Liu Group in Beijing, dealing with the 2009 changes to the law and 2010 changes to the Implementing Regulations and Guidelines. The speaker was Mr Zhang Hanguo of the SIPO Patent Re-examination Board. I hope to report in more detail elsewhere in future.

Here are some design-related points of interest for now:

• Two interesting recent cases on "reference views" were discussed, one concerning reclining sofas, and the other security doors. "Reference views" are additional views, commonly used in Japan, showing the product in use in various states (perhaps where different parts are opened, closed or otherwise moved). The issue was whether these should be taken into account, or ignored. The latest opinion of the Board (a shift from their former opinion) seems to be that there is no legal basis for ignoring them, and that they should therefore be taken into account for both validity and scope.
• He also discussed a recent invalidation case on a car design, compared to two generally similar designs. The Board had held that the similarities in body shape were caused by functional (i.e. aerodynamic) reasons, so that differences in headlight shape and at the rear of the car made the design valid. At first instance the Court overruled the Board and invalidated the design. The case is still pending at second instance. It makes a particularly interesting comparator for European eyes, since similar evolving car design situations were considered by the Swedish court in DaimlerChrysler's Application ([2005] E.C.D.R. 15) (in which the design was held invalid), and in the DaimlerChrysler v Centigon stretch limo infringement case, reported on this blog (in which the first instance German court held the design valid). Perhaps the issue of headlights deserves special treatment - to many, the front of a car resembles, and is as recognisable as, a human face, making headlight differences particularly striking.
• Design examination may be a bit stricter in future. SIPO hope to further study and standardise examining for whether designs significantly differ as, at present, even examiners with some years of experience may still sometimes have difficulty.
• Article 25 of the Patent Law has been amended to add an exclusion of "Designs of two-dimensional printed goods, comprising a pattern, a color or the combination of the two, which serve mainly as indicators." Apparently the indication can be of use, purpose or source. This provision will presumably therefore eliminate much potential overlap with logo trade marks.
• Where an application is found to contain multiple designs (a "lack of unity" situation) some of them may now be abandoned in response in the same way as where patent claims lack unity.
• Where invalidation is based on an earlier right rather than prior art, the applicant for invalidation can (indeed, must) now give proof that they are the prior rights holder or interested party but is no longer required to provide an earlier efffective ruling or judment by the Court or executive showing conflict with the earlier right (Sec 3.2 Guidelines based on Rule 66.3 of the Implementing Regulations). "Interested party" includes anyone who could enforce the earlier right - presumably an exclusive licensee for instance. (Sec 3.2 Guidelines based on Rule 66.3 of the Implementing Regulations).

We have perhaps not given China the coverage it deserves in the past.  I am not sure this blog is accessible from within China, but we are happy to post any China-related material readers may have.