If a patented design is only a combination or replacement of design features of different parts of the same reference design of products of the same category by applying conventional design techniques such as centering and symmetry, the present patented design may be generally considered to be only slightly different from the reference design and have no unique visual effect.
Natural Person X is the patentee of a design patent for a "Screwdriver Storage Case" (hereinafter referred to as "the present patent"). Foshan A Factory filed an invalidation request with the CNIPA and submitted a Chinese design patent as Evidence 1, arguing that the present patent did not possess distinguishing features in view of the combination of Evidence 1 and other evidence.
After examination, the CNIPA found that the main differences between the present patent and Evidence 1 were: 1) The positions of the handle storage cavity were different. In the present patent, the handle storage cavity was located at the center of the rectangular case, while in Evidence 1, the cavity was located on the left side of the rectangular case. 2) The shapes and positions of the blade storage cavities were different. In the present patent, two blade storage cavities were symmetrically arranged on both sides of the handle storage cavity, each containing four sets of blade slot units evenly arranged from top to bottom, with each unit having three blade slots. In Evidence 1, one blade storage cavity was located on the right side of the rectangular case, adjacent to the handle storage cavity, and contained four sets of blade slot units evenly arranged from top to bottom, with each unit having six blade slots. The differences in the positions of the handle storage cavities, as well as the shapes and positions of the blade storage cavities, result in significant differences in the corresponding partition shapes and overall designs between the present patent and Evidence 1. These front designs are noticeable parts to general consumers, meaning that these differences had a notable impact on the overall visual effect. Therefore, the present patent and Evidence 1 were clearly distinguishable, and there was no evidence proving that these differences were conventional designs for such products. Additionally, the present patent also possessed distinguishing features in view of the combination of Evidence 1, Evidence 2 (or Evidence 3), and conventional designs, and in view of the combination of Evidence 4, Evidence 2 (or Evidence 3), and conventional designs. On November 3, 2020, the CNIPA issued a decision on invalidation, upholding the validity of the present patent. Dissatisfied, Foshan A Factory filed an appeal, seeking the revocation of the contested decision and an order for the CNIPA to reissue a decision.
Upon trial, the first-instance court held that the present patent possessed distinguishing features in view of the combination of Evidence 1 and conventional designs. On March 22, 2022, the court issued an administrative judgment dismissing the claims raised by Foshan A Factory. Foshan A Factory filed an appeal. On November 8, 2023, the Supreme People's Court issued a final administrative judgment, revoking the administrative judgment of the first-instance court and the contested invalidation decision made by the CNIPA, and ordering the CNIPA to reissue a decision on the invalidation request filed by Foshan A Factory against the design patent.
The court's effective judgment held that the present patent possessed distinguishing features in view of the combination of Evidence 1 and conventional designs. The shape, size, and number of the strip-shaped handle storage cavities and blade storage cavities are primarily determined by the shape, size, and number of the handles and blades they accommodated. The design of the handle and blade storage cavities cannot be separated from the shape, size, and number of the handles and blades. The grooves for accommodating handles and blades are fundamental design features of screwdriver storage cases. Where Evidence 1 has disclosed the design of grooves for accommodating handles and blades, general consumers, based on the overall design inspiration provided by Evidence 1, could easily apply conventional design techniques such as centering and symmetry to relocate the handle storage cavity to the center and arrange the blade storage cavities evenly from left to right or from top to bottom, symmetrically distributed on both sides of the blade storage cavities. Therefore, by applying conventional design techniques—such as combining or replacing different design features of the same type of product—to Evidence 1, a design substantially identical to the present patent could be obtained, exhibiting only subtle differences in overall visual effect and lacking a unique visual effect. Thus, the present patent did not possess distinguishing features in view of the combination of Evidence 1 and conventional designs.
(2022) Zui Gao Fa Zhi Xing Zhong No. 567
If you have any question about the protection of intellectual property rights, please feel free to send us emails. For patent-related matters, please send to info@afdip.com. For trademark/litigation/legal matters, please send to info@bhtdlaw.com.
