China's new Supreme Court interpretation of Scope of Designs

We learn from the excellent IP NEWS published by Linda Liu & Partners that the Chinese Supreme Court has published new interpretation of the scope of patents, designs and utility models. These took effect on 1st January 2010. Articles 9 to 11 are particularly relevant to designs. A Chinese version is here.
We reproduce below, with thanks, the translations by Linda Liu & Partners, noting that those parts amended since the consultation document in June 2009 are underlined. From a European point of view, we note the "overall impression test", but also the significance of the written description of the design in defining its "essential features".

Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of Law to the Trial of Patent Right Disputes
(translation by Vera WEI of Linda Liu & Partners)

Article 9 The People’s Court should determine “the scope of protection afforded by a design patent” prescribed in Article 59.2 of the Chinese Patent Act with reference to an identical or similar design with the patented design used on the identical or similar categories of product as the design patent product. Where the categories of products are identical or similar but the allegedly infringing design is not identical or similar to the patented design, or where the allegedly infringing design is identical or similar to the patented design while the categories of products are not identical or similar, the People’s Court should hold that the allegedly infringing design does not fall into the protection scope of the design patent.

Article 10 Products within the same category referred to in Article 9 of this judicial interpretation means products for the same use; products within similar categories means products for similar uses. The People’s Court can determine the use of a product by referring to the International Classification of Designs, the name and function of the product described in the brief description, and other factors such as sale and actual use of the product.

Article 11 The People’s Court should determine whether designs are the same or similar based on the perceptions of the relevant public to the product of the design. “Relevant public” referred to in the preceding paragraph means one who has basic knowledge about the conditions under which the patented design was created and is able to distinguish the divergences in shape, pattern, and color amongst different designs but who will not pay special attention to minor differences in the shape, pattern, and color of designs.

Article 12 The People’s Court should determine whether designs are the same or similar by considering the overall visual effect of designs and all the design features within scope of protection afforded by the design patent. However, the only one design feature that can achieve the technical effect of the product and those features that cannot affect the overall visual effect, such as the material and internal structures, shall not be taken into consideration. Where the allegedly infringing design and the patented design are so similar that it can confuse the relevant public, the People’s Court shall hold the allegedly infringing design is similar to the patented design. Where the allegedly infringing design does not contain the essential features of the patented design, it should be assumed that the allegedly infringing design will not cause confusion to the relevant public with regard to its overall visual effect. The essential features of a design referred to in the preceding paragraph means the features of a patented design that causes a prominent visual effect in the relevant public when compared with existing designs. The People’s Court can identify the essential feature by referring to the brief description.

This week - European CFI hears design appeal

Tomorrow Tuesday 19th January is the Hearing date for European Court of First Instance case T-153/08, Shenzhen Taiden v OHIM - Bosch Security Systems intervening. This is the second stage appeal on RCD 214903-0001, a conference call speakerphone. The design was upheld at first instance by the Invalidation Division of OHIM, but that decision was reversed on appeal, the Board of Appeal (in Decision R 1437/2006-3) taking a much broader view of the design freedom available to the designer of such products and hence finding the design too similar to the cited prior art. Since in Europe essentially the same test is applied for infringement as for validity, the CFI decision will affect both. Will they find the design valid (and consequently of narrow scope) or invalid (but potentially of broad scope)? Watch this space.