If combining prior design features to form a patented design requires significant modification and adjustment – such as cohesion, response, transition, and coordination - to achieve a harmoniously unified appearance and functionality, the combination process may generally be deemed as beyond the knowledge level and cognitive ability of general consumers and it is difficult for them to think of combining such design features. By this time, it may be determined that the prior design does not teach this combination.
Natural Person X owns the design patent "Telescopic Height Gauge" (hereinafter referred to as the Patent). On June 8, 2021, Company A filed an invalidation request against the Patent. CNIPA issued an invalidation decision on December 29, 2021, concluding that the prior designs did not have evidently combined teachings and therefore maintained the Patent's validity. Company A disagreed and filed a lawsuit, requesting the court to revoke the contested decision and to order CNIPA to make a new decision.
The first-instance court rendered an administrative judgment to revoke the contested invalidation decision made by CNIPA and to order CNIPA to issue a new decision. Both CNIPA and X appealed this judgment. On September 18, 2023, the SPC issued a final administrative judgment: revoking the first-instance judgment and dismissing Company A's claims.
The court's effective judgment held that, before comparing the combination of prior design features with the patented design, it must first be determined whether there is a "combined teaching" - that is, whether general consumers can easily think of combining the prior design features. Since the designs protected under China's Patent Law are new designs that possess aesthetic and are suitable for industrial application, that is, they are industrial product designs rather than pure artistic designs and representing the application of aesthetic principles to product appearance. Therefore, the designs must be based on and embodied in specific products. Although when comparing a combination of prior design features with a patented design, the assessment focuses solely on the product's visual appearance after combination, excluding non-design factors such as functionality, the prerequisite of the assessment is that the combined design features must be integrated into a product with harmonized appearance and functions. Otherwise, the combined design would become a mere artistic design detached from any practical product. If significant modification and adjustment such as cohesion, response, transition, and coordination are required to make the combined product a harmonious and unified whole, it may generally be deemed that the combination process is beyond the knowledge level and cognitive ability of general consumers, and it is difficult for general consumers to think of combining such design features. Where the party concerned does not provide evidence proving that the prior designs disclose such combination method, the people's court shall determine that the prior designs do not teach the combination.
In this case, Company A proposed two approaches of evidence combination. First, in the combination of Evidence 1 and Evidence 2, the hook is removed from the top of Evidence 1, which leaves no corresponding design for connecting Evidence 2's pivot axis and folding ruler, necessitating a redesigned connecting component. Additionally, Evidence 1 lacks the necessary space to accommodate the original folding ruler's rotation around the axis, requiring further modifications. These design alterations do not belong to "minor variations." Second, in the combination of Evidence 3 and Evidence 4, a segment of a folding ruler is added onto Evidence 3, which is a complete telescopic ruler without additional structural features. As Company A did not substantiate with evidence demonstrating the prior existence of the combination in prior designs, it cannot be concluded that an ordinary consumer would think of such a combination approach easily. In conclusion, the combination of Evidence 3 and Evidence 4 still demands significant design adjustments and modifications.
(2022) Zui Gao Fa Zhi Xing Zhong No. 821
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