The partial design regime was introduced for the first time in the fourth amendment to the Chinese Patent Law, which took effect in 2021. However, owing to the absence of corresponding provisions in the Guidelines for Patent Examination, examination of partial design applications did not begin until the first half of 2023. Only after the amended Implementing Regulations of the Chinese Patent Law and Guidelines for Patent Examination came into force in early 2024 can the examination framework for partial design applications be regarded as fully established. Consequently, in China, both invalidation and infringement cases involving partial designs are still in their infancy. How the similarity comparison for partial designs differs from, or aligns with, that for overall designs, and how the fundamental criterion of “overall observation, comprehensive judgment” should be understood, are also issues of widespread concern. Only by further clarifying the meaning of “overall” and “comprehensive” can an accurate determination be made.
Recently, the China National Intellectual Property Administration (CNIPA) issued its examination decision on a partial design patent invalidation case we represented, in which the patent right involved was maintained as valid. The outcome of this case not only lays a solid foundation for the client’s subsequent enforcement actions but also demonstrates our firm’s professional expertise and precise strategic capabilities in the field of intellectual property protection.
The involved patent claims a partial design of a front portion of a product. The invalidation petitioner used a previously published overall design patent, which belongs to the same patentee, as evidence. The petitioner argued that the differences between the two designs were merely minor variations and conventional features, which do not impact the overall visual effect.
We conducted an in-depth review of the case file and undertook a detailed analysis of multiple published invalidation cases and infringement actions concerning partial designs. Drawing on the relevant provisions of the Guidelines for Patent Examination and our extensive prosecution experience, we stated unequivocally in the response brief that, when comparing partial designs, the assessment must start from the claimed portion and adopt the approach of “overall observation, comprehensive judgment.” Here, “overall” refers to the “partial” portion that is drawn in solid lines and claimed in the design patent, while “comprehensive judgment” requires assessing the impact of the similarities and differences between the claimed portion and the comparative design on the visual effect produced by the portion. In addition, any change in the position and/or proportional relationship of that portion within the product as a whole must be taken into account.
We also conducted a comprehensive search of the prior design corpus, thoroughly compared the involved patent with the evidence, identified similarities and differences, and—against the backdrop of the prior design corpus—undertook a full analysis of the impact those similarities and differences exert on the overall visual impression.
Ultimately, the CNIPA adopted our core argument, holding that the differences between the involved patent and the evidence are sufficient to create a markedly different overall visual effect on the ordinary consumers. Finding the two designs clearly distinct, the CNIPA maintained the patent valid, thereby securing a foundation for the patentee’s continued enforcement efforts.
Recently, the China National Intellectual Property Administration (CNIPA) issued its examination decision on a partial design patent invalidation case we represented, in which the patent right involved was maintained as valid. The outcome of this case not only lays a solid foundation for the client’s subsequent enforcement actions but also demonstrates our firm’s professional expertise and precise strategic capabilities in the field of intellectual property protection.
The involved patent claims a partial design of a front portion of a product. The invalidation petitioner used a previously published overall design patent, which belongs to the same patentee, as evidence. The petitioner argued that the differences between the two designs were merely minor variations and conventional features, which do not impact the overall visual effect.
We conducted an in-depth review of the case file and undertook a detailed analysis of multiple published invalidation cases and infringement actions concerning partial designs. Drawing on the relevant provisions of the Guidelines for Patent Examination and our extensive prosecution experience, we stated unequivocally in the response brief that, when comparing partial designs, the assessment must start from the claimed portion and adopt the approach of “overall observation, comprehensive judgment.” Here, “overall” refers to the “partial” portion that is drawn in solid lines and claimed in the design patent, while “comprehensive judgment” requires assessing the impact of the similarities and differences between the claimed portion and the comparative design on the visual effect produced by the portion. In addition, any change in the position and/or proportional relationship of that portion within the product as a whole must be taken into account.
We also conducted a comprehensive search of the prior design corpus, thoroughly compared the involved patent with the evidence, identified similarities and differences, and—against the backdrop of the prior design corpus—undertook a full analysis of the impact those similarities and differences exert on the overall visual impression.
Ultimately, the CNIPA adopted our core argument, holding that the differences between the involved patent and the evidence are sufficient to create a markedly different overall visual effect on the ordinary consumers. Finding the two designs clearly distinct, the CNIPA maintained the patent valid, thereby securing a foundation for the patentee’s continued enforcement efforts.