Issues to Be Urgently Addressed Concerning Partial Protection for Design Patent

 
　　 　　　　　　　　Michael Minjun Cai and William Yang

　　Pursuant to the Provisions of the current Chinese Patent Law, the Implementing Regulations thereof and the Guidelines for Patent Examination, the protection of design should be construed as protection of designs, in its entirety, incorporated in industrial products. As for the design of a part of product ( hereinafter referred to as the "partial design" ) , it is not separately protected as is shown in the provisions of Article 56 , paragraph two of the Patent Law , Rules 2 , paragraph three of the Implementing Regulations thereof , Article 31 , paragraph two of the Patent Law and Chapter Three , Part Ⅰ of the Guidelines for Patent Examination .

　　In practice , however , the system for the protection of design incorporated in a product as a whole has had some adversary effects on the acquisition and affirmation of the patent right for design , the determination of the extent of the right and the establishment of infringement . Following is an elaboration of these issues.

Effect on Acquisition of Patent Right for Design

　　Firstly , the practice of protecting the design of product as a whole impedes application for the patent for design of subsequent improvement . As far as the traditional and relatively mature products or products that leave relatively little room for designing are concerned, there is not much room for improving the existing designs. That is, it is almost impossible to change the whole external shape of the products. It is possible to innovate on and improve part of them , but the improved design in respect of which application is filed would be declared invalid in the post-grant invalidation procedure since it would be deemed an " identical invention-creation " for being similar to the overall appearance of a prior design patent.

　　The design of toothbrush is a typical example in this respect. For years, people have been taking pains to constantly improve the design of the head brush part and handle of the tootllbrush to make more appealing the appearance and better the effect of tooth brushing . However, since, at present, no separate protection of the patent for design is available for the partial design of product in China, the following irrational phenomena have arisen. For example, an application has been filed by the designer for the patent for design of a toothbrush. Another person or the designer himself then files another application after making partial change thereof based on the initial design（changing the drawing of the handle of the toothbrush ) . In this case, the design of the later application is usually deemed to be an identical invention-creation because it is, on the whole , similar to the design of the prior application . Taking a step back , even if the subject matter of the later application for patent for design is patentable , the unity and integrity requirements would make it possible for the application for the patent for design of a toothbrush to claim only the whole design of a toothbrush comprising both the handle and the head brush part . This would exclude from patentability a design of a toothbrush having a head brush part dissimilar to any other type and a handle of novel design. The extent of protection is obviously very much reduced.

　　Secondly , for these reasons , many design applicants, in practice , have to adopt preventive measures to prevent others from filing new applications for patent for design by making minor changes to their designs , that is , file , on the same day , several applications with the Patent Office for patents for several partially changed designs incorporated in a product. Since the Patent Office does not examine applications for the patent for design as to substance, the applications for the patent for design as to substance, the applications will normally be granted the patent right. However, the patent right for design obtained this way is unstable in its legal status, and faces the risk of invalidation

　　In the process of applying for the patent for design, some applicants make use of dotted lines and full lines, shaded lines, drawings and essential points of design to highlight or explicate the claimed essential design elements. For example, full lines are used to illustrate the essential part of the design of a product and dotted lines to outline the product other than that shown with the full lines. This both highlights the essential elements of the design and displays the entire product incorporating said design, thus greatly facilitating the determination of the extent of protection of the design. Furthermore, use of dotted lines, which would show more clearly the features of design more clearly, at present, is commonly made of in the major countries strong in industrial design. This practice is worth being drawn on.

　　In respect of patent applications of the kind, examiners, in their examination, will require applicants to change the dotted lines indicating non-essential element of a design into full lines in the application documents. However, such change makes it impossible to indicate the location of the essential element of design, and, as a result, the subject matter of protection for design would be the design of the product as a whole. To avoid this undesirable consequence, some applicants submit another set of drawings in which the essential element of design is shown with full lines and the rest dotted lines, and they would point out, in the summary explanation, that the part shown with full lines in the drawings is the essential element of the design. The usefulness of this practice is very much limited because these drawings are usually not printed in the design gazette and the contents of the summary explanation is selectively disclosed. What makes the applicants feel even more helpless is that, when claiming priority for an application, applicants cannot use full lines to outline the product shown in the priority text because this practice may result in their being unable to enjoy the right of priority in their prior applications. Applicants cannot make amendment until the Patent Office requires them to make rectification. As far as some examiners of the Patent Office understand the matter , the product shown with dotted lines and full Imines in priority text is certain to be dissimilar to the whole product shown with the full lines changed from the dotted lines . In fact, the problem also exists with subsequent rectification. Lack of separate protection of partial design renders the partial priority out of the question and impossible for some foreign applications for patent for design to enjoy the right of priority. This is obviously unjustifiable.

　　In addition, a design is protected as a whole; therefore, even if an improved design is conferred the patent protection, the examiners would hold the later improved design invalid according to the provisions in the invalidation procedures for the reason that the relevant improvement relates only to part of the design, or only determine that one patent is valid which is applied for by the same applicant on the same day and has been granted and the other patent invalid. The consequence of the practice is not only that the achievement of a designer made with their hard intellectual efforts cannot be eventually protected , but also that the designer has to spend a great deal applying for the paten for design and going through the invalidation procedures . This world discourage designers from inventing and seeking patent protection.

Effect on Determination of Extent Of Protection for Design Patent and on Establishment of Infringement

　　Lack of separate protection of the patent for partial design under the current Patent Law makes it difficult to determine the extent of protection of a patent for improved design relating to traditional or mature products for these reasons. First, the way of protection of design as a whole tends to induce neglect of the essential element of design, and imprecise essential element of design often results in unjustifiable extension of the extent of protection of the patent for design. Second, since it is only provided in the implementing Regulations of the Patent Law that when necessary the applicants should submit a summary explanation of the design, containing the explanation of the essential element of the product incorporating the design, in many cases, an applicant does not submit explanation of the essential element of a design when filing the application, nor does the Patent Office require the submission. Some examiners even refuse to accept explanations of essential element and drawings made in dotted and full lines submitted by applicants on their own initiative (in recent years, things have somewhat changed. At the request of applicants, more and more examiners now accept explanations of essential element of designs submitted together with the applications filed by applicants). Besides, even if an applicant submits the essential element of a design and the drawings made in dotted lines and full lines and the Patent Office accepts them, what have been submitted are sometimes not published in the patent gazette, which would also make it difficult to determinate the extent of protection of the patent for design.

　　The uncertainty, or difficulty in determination, of the extent of protection makes it difficult to establish infringement when it arises. Sometimes, the administrative enforcement officials or judges have to accept the explanation of the extent of protection of the patent for design made by a patentee himself because , unlike patent for invention or utility model, they usually cannot find out the basis on which the extent of protection of patent for design is determined in the document of patent grant. Furthermore, if a patent for design is compared with an accused infringing product, it is very difficult to distinguish which technology falls within the public domain before the filing date and which is the patentee's independent invention from the perspective of what has been currently documented relating to the patent for design for lack of illustration of the essential element of the design. Therefore, it is, in practice, impossible for the administrative enforcement officials or judges to apply the principles of "comprehensive judgement" and "judgement based on essential element" as provided for in the Guidelines for Patent Examination to make judgement and it is very much likely for them to protect as patent the design which the public can freely use, which is obviously neither fair nor justifiable.

　　Besides, lack of legal protection for partial design has in practice caused the phenomenon in which imitators take pains not to imitate the entire design incorporated in a product but imitate the part originally invented so as to evade accusation of infringement.

Approach and resolution

　　The current laws protect only the design of a whole product, but not separately protect parts of the design incorporated in the product. As a result, in the phase of the examination of the application for patent for design, the illustration and explanation of the essential element of design are not required, nor is the judgement thereof necessary; while in the follow-up procedure for the determination and protection of the patent right, when evaluating the identicalness or similarity of the design in dispute, the principle of judgement based on essential element currently applied requires making determination on the essential element of a design. The Guidelines for Patent Examination defines the essential element of design as the "part of a product which easily attracts consumers' attention", and determines the ordinary consumers as the subject to judge identicalness or similarity of designs. Since in the documents of patent for design is not presented any explanation of the essential element of design, the part attracts consumers' attention varies for each individual due to their different habitual way of looking at things. What's more , different understanding on the part of the examiners renders the determination of the essential element of a design uncertain to a large extent . Obviously, the protection of a design as a whole is impossible to resolve the matter. The only way out is to protect partial design by legislation.

　　To date , protection of design in such countries as most European countries, the United States of America, Japan and the Republic of Korea all entails protection of partial design. It is therefore suggested that, in order to address the issue relating to the protection of the designs, the practice of the above countries be drawn on and that the current Patent Law and its Implementing Regulations be revised and the provision on protection of partial design be introduced, with the non-substantive examination of applications for patent for design remaining unchanged.

　　Of course, revision of law (the Patent Law and its Implementing Regulations included), involving the legislative procedure, cannot be done within a short period of time. For that matter, these writers hereby suggest that the State Intellectual Property office may first revise the Guidelines for Patent Examination pursuant to the provision of rule 28 of the Implementing Regulations by requiring submission, when an application is filed for the patent for design, of the summary explanation of a design to explain the essential element of the product incorporating said design, and then publish the explanation of the essential element of the design and drawings together with the patented design per se in the patent gazette. In this way, the adversary effects caused by protection of the designs as a whole would be partially eliminated.