What are the methods to identify the infringement of design patents?

With the continuous improvement of people's material and cultural living standards, people pay more and more attention to the beauty of appearance besides quality and performance when buying goods. Because design can bring remarkable economic benefits to industrial producers, the number of applications for design patents in China has increased rapidly in recent years. At the same time, there are more and more disputes between civil subjects about patent infringement of design. Due to the principle of comparison stipulated in the patent law, it has brought some difficulties to the trial of patent infringement disputes of design. This paper only discusses the infringement judgment in the trial of design patent infringement disputes in combination with trial practice. First, the determination of the scope of patent protection for design; The patent right of design, like the patent right of invention and utility model, is an intangible property right, and its object of right cannot be clearly defined as tangible property. In order to reasonably protect the patent right of design, the public must be able to know the scope of protection of the patent right of design with sufficient certainty. In the case of design patent infringement dispute, to judge whether the accused infringing product infringes the design patent right, we must first determine the protection scope of the right holder's design patent right. The determination of the protection scope of design patent right is the basis of judging the infringement of design patent. Paragraph 2 of Article 56 of the Patent Law stipulates: "The scope of protection of the design patent right shall be subject to the product with the design patent shown in the picture or photograph." Therefore, China's patent law protects not simple designs, but designs combined with products. In this sense, the design protected by China's patent law must take the product as the carrier and cannot exist without the product. The protection scope of the patent right of design in China includes two factors: the design and the products attached to it. (1) correctly understand the meaning of design and patented product of design. Paragraph 3 of Article 2 of the Detailed Rules for the Implementation of the Patent Law stipulates: "The term" design "as mentioned in the Patent Law refers to a new design that is aesthetically pleasing and suitable for industrial application by combining shapes, patterns or their combinations with the colors, shapes and patterns of products." Different from inventions and utility models, appearance design is based on the aesthetic feeling of products, which is expressed on the outside of products and is about the decorative or artistic design of product appearance. At the same time, the design protected by China's patent law must also be able to be applied in industry. If you can't reproduce the shape and pattern of a product or the combination of color and shape and pattern in an industrial way for the purpose of production and operation, it doesn't belong to the design in the sense of China's patent law. It should be noted that only industrial products can be used as the carrier of design, and agricultural products, livestock products and natural objects cannot be used as the carrier of design. The so-called patented product of design means that the design of the product is the same or similar to the patented design, and the product is the same or similar to the product category designated for use when the design is authorized. To judge whether the accused infringing product belongs to a patented product, we should not only look at whether the appearance design of the product is the same as or similar to the patent design of the obligee, but also look at whether the product is the same as or similar to the product category designated for use in the patent design of the obligee. When judging the infringement of patented design products, we should first examine whether the accused infringing products and patented products belong to the same or similar products. If the product does not belong to the same or similar product, it does not constitute infringement. Only when the product accused of infringement is the same as or similar to the patented product of design, the next judgment is needed. To determine the product category, we can refer to the product name, according to the classification table of design products published by China National Intellectual Property Administration, and comprehensively consider the judgment standards of consumers and recognized business habits. In judicial practice, the identification of the same or similar products is usually based on the use and function of the products, with the use as the main purpose. The same use and function is the same product; Similar products have the same purpose, but the specific functions are different. For example, different mechanical clocks, although different in structure, have the same purpose and function, so they belong to the same product; Quartz clock and mechanical clock are both timing tools with the same purpose but different functions, so they are similar products. (2) Reasonably explain that the appearance design of the pictures or photos in the patent announcement is expressed by the appearance, pattern, color and other factors of the product and the combination of these factors. These factors themselves are more suitable for visual intuition, but it is difficult to describe them accurately in words. Therefore, Article 27 of China's Patent Law stipulates: "An applicant for a patent for a design shall submit a request, a picture or photograph of the design and other documents, and shall specify the product using the design and its category." The patent law does not require the applicant for a patent for design to submit a written description document such as a patent claim or specification. Only when it is considered necessary, the patent administration department will require the applicant to submit a brief description according to the provisions of Article 28 of the Detailed Rules for the Implementation of the Patent Law to supplement the description of the patented product of design shown in the picture or photo, including the design points, the request for color protection and the omission of the view using the product of design. After the design patent is authorized, the channel for the public to know the content of its rights is limited to the "Design Patent Bulletin" issued by China National Intellectual Property Administration. Paragraph 2 of Article 56 of the Patent Law stipulates: "The scope of protection of the design patent right shall be subject to the product with the design patent shown in the picture or photograph." Because there is no mandatory provision in the patent law to submit brief descriptions, many applicants for design patents do not submit brief descriptions, and the patent law does not clearly stipulate whether brief descriptions can be used to explain pictures or photographs, which makes it difficult for some judges to interpret the authorized announcement diagram in the patent bulletin. Generally speaking, although pictures and photos look clear at a glance, because they can't modify their meaning objectively like words, there is much more room for free interpretation of pictures and photos than words. Different people may give different explanations about the position of the designer's original design part in the design authorization publicity from different interests. What is more common in practice is that in the trial of a case, the obligee often claims that this is also its original part, and that is also its original part, while the accused infringer claims to reduce the original part of the obligee's patent as much as possible. As we all know, the design protected by the patent law is an original design scheme, in other words, only the innovation in the design is the protection scope of the patent right of the design. The right holder's unlimited expansion of innovation is undoubtedly an expansive explanation of the scope of patent protection. If the obligee is allowed to expand the protection scope of his patent right at will, it will undoubtedly cause great harm to the public interest. How to protect the interests of the patentee and prevent the patentee from using the patent for unreasonable monopoly when determining the protection scope of the design patent right, so as to build a balance between the interests of the patentee and the public, is a serious problem faced by every patent judge. The interpretation of the scope of patent protection should combine leniency with severity. The author agrees with most people that the design space of the product should be considered comprehensively when explaining the protection scope of the design patent right according to the pictures or photos in the patent announcement. If a product has a large design space (such as a newly listed product), the protection scope of its design patent right should be interpreted broadly, while if a product has a small design space (such as a refrigerator, profile and other mature products), the protection scope of its design patent right should be interpreted narrowly. The reason is simple, because the more mature the product, the more known ingredients it contains. (3) Exclude known previous designs. According to the provisions of Article 23 of the Patent Law, a design that has been granted a patent right shall be different from or not similar to a design that has been publicly published in domestic and foreign publications or used in China before the filing date. We refer to the design published in domestic and foreign publications or used in China before the application date as known prior design. A design is attached to a product, and unless the product is unprecedented, it will definitely contain known ingredients. It can be said that most design patents are improvements on the basis of existing designs in the past. Although the provisions of the patent law do not stipulate that the people's court must exclude the known prior designs in patent pictures or photographs when judging the infringement of design patents, the known prior designs belong to the common wealth of human society and are already in the public state. The public can know their design scheme at any time through appropriate channels, and promote it, so that its value can be more fully reflected. If these known prior designs are also included in the patentee's rights, they are allowed to enjoy them exclusively and make them public. Therefore, in order to protect the public's interests, according to the legislative spirit of the Patent Law, when determining the protection scope of the patent right for design according to the authorized bulletin board, the judge should first distinguish the known prior design part from the original part, and exclude the known prior design part from the protection scope of the patent right. In the design patent infringement lawsuit, the accused infringer can use the known prior design to defend, that is, he claims that the accused infringing product uses the known prior design design scheme or is closer to the known prior design scheme. In the trial, the following methods can be adopted to determine the prior design: firstly, the obligee states the innovation points contained in its patent, then the accused infringer gives evidence to prove the prior design part of the innovation points advocated by the obligee, and then the obligee and the accused infringer cross-examine, and the part that the obligee does not advocate as innovation points and the part that the accused infringer gives sufficient evidence can be considered as the prior design. (4) Excluding the above-mentioned functional designs, designs are decorative or artistic designs of industrial products, and the design patent system aims to protect the beauty of industrial products. Therefore, when determining the protection scope of design patent, we should pay attention to distinguish the appearance features caused by the product's function and the parts that contribute to the product's appearance, so as to exclude the design content that only plays a functional role or is determined by the technical characteristics of the product and has no aesthetic effect on the product's appearance. Specifically, the unique design that can be used to realize the technical function of a product or the unique appearance feature of a product dominated by technical function should be excluded from the protection scope of the design patent right. Because these functional features are not to meet the decorative effect of products, but from the perspective of practical functions. For example, a bicycle can only roll with the help of wheels, which determines that its wheels can only be round, and the round shape is the only design that can be used to realize the wheel rotation function, so the round shape of bicycle wheels does not belong to the protection scope of the design patent right. However, if the design of a product has both decorative and functional features, it should not be excluded from the scope of patent protection. Take shoes as an example, all shoes have the same function, but this same function can be realized through different designs. The shape, pattern and combination of the upper and the combination of color, shape and pattern can be varied. These combinations not only meet the functional characteristics of shoes, but also make substantial contributions to the aesthetic effect of shoes. These substantial contributions will attract the attention of consumers, making this shoe obviously different from other shoes, so it should be protected by design patents. (5) Exclusion of non-design patents, as the name implies, is to protect the appearance of products, and appearance refers to the appearance part of products that observers can directly perceive from the outside. The internal parts of products are invisible and will not be noticed by consumers in the process of purchasing products and normal use, because they have no aesthetic feeling in appearance, so they do not belong to the design referred to in the Patent Law and its implementing rules. Similarly, other non-design elements, such as the size of the product, the true color of the materials used, the theme and the meaning of the words used in the product design, should also be excluded from the scope of protection of the patent right for design, because they do not have aesthetic appearance. Second, the behavioral elements of the design patent infringement After determining the scope of protection of the design patent, we need to determine whether the accused infringer infringes. The infringement of the accused infringer is a prerequisite for the infringement of the design patent. Paragraph 2 of Article 11 of the Patent Law stipulates: "After the design patent is granted, no unit or individual may exploit its patent without the permission of the patentee, that is, it may not manufacture, sell or import its patented products for production and business purposes." Article 57 of the Patent Law stipulates: "If a patent is exploited without the permission of the patentee, it is an infringement of the patent right." Thus, the act of infringing the patent right of design shall meet the following conditions: (1) Without the permission of the obligee, without the authorization of the patentee. The essence of patent right is the exclusive right of patent exploitation. According to Articles 10 and 12 of the Patent Law, the counterpart can obtain the authorization of the patentee to exploit his patent by concluding a patent transfer contract and a patent exploitation license contract with the patentee; A third party may obtain the right to exploit the patent by signing a sub-exploitation license contract with the licensee in the above-mentioned patent exploitation license contract. Of course, this sub-license contract must be approved by the patentee. In addition, the implementation of the design patent is an infringement. It should be noted that the patent law has no restrictive provisions on the effectiveness of the patent right for design, and the promotion and application system stipulated in Article 14 of the Patent Law and the compulsory licensing system stipulated in Chapter VI of the Patent Law do not involve the patent right for design. (II) Patent Implementation According to the second paragraph of Article 11 of the Patent Law, patent implementation refers to the act of manufacturing, selling or importing patented products for the purpose of production and operation. The premise of patent implementation must be for the purpose of production and operation, that is, for industrial and agricultural production or commercial operation, not for personal consumption. In addition, the behavior mode is the behavior of manufacturing, selling and importing patented products of design. It should be noted that the act of implementing the design patent does not include the act of using and the act of promising to sell. (three) the object of the act infringes on the product of the design patent. As mentioned above, a patented product of design must meet two conditions: first, it is the same as or similar to the product protected by the right holder; Second, it is the same as or similar to the design that the obligee has obtained patent protection. The first condition has been detailed in the first part of this paper, and the second condition will be discussed in the next part, so I won't repeat it here. As long as the above three conditions are met at the same time, it constitutes an infringement of the design patent. Different from the general infringement, whether the actor is subjectively at fault is not a constitutive requirement of the design patent infringement. Three. Comparison between the design of the accused infringing product and the design patent; The accused infringing product belongs to the protection scope of design patent, which is the constitutive requirement of design patent infringement. Because, even if the accused infringer has the behavior of manufacturing, selling and importing products similar to the patented product of design for the purpose of production and operation without the permission of the obligee, if the design of the accused infringing product does not fall within the protection scope of the patented product of design, it still does not constitute infringement. The comparison between the design of the accused infringing product and the design patent is a difficult point to judge the infringement of the design patent. At this stage, we need to observe and compare the appearance design of the accused infringing product with that of the patentee, and determine whether the appearance design of the accused infringing product is the same as or similar to that of the patentee, so as to determine whether the accused infringing product is infringing. According to the second paragraph of Article 56 of the Patent Law, the people's court shall compare the accused infringing product or its photo with the design picture or photo in the patent authorization document when judging the design patent infringement. We should pay attention to the following problems when comparing: (1) The patented product of the main design being compared is a commodity with more daily life than the patented product of invention and utility model. For some subtle differences of similar products, ordinary consumers often ignore them, but professionals can easily distinguish them. When judging whether the accused infringing product is the same as or similar to the patented product of design, it is obviously unfair to the obligee from the professional point of view. Therefore, judging the infringement of design patent should be based on the aesthetic observation ability of ordinary consumers, not the aesthetic observation ability of professional and technical personnel in the field of design patent. For the same or similar products, it does not constitute infringement if ordinary consumers exercise general attention to avoid confusion, but it does constitute infringement if ordinary consumers exercise general attention to avoid confusion. The above-mentioned general consumers refer to those who buy and use patented products of design. Usually, the meaning of "consumer" in the Consumer Protection Law is consistent with that of ordinary consumers. However, for unusual consumer goods, such as building materials, machine parts, power tools, etc. Ordinary consumers are not their buyers and do not have the general knowledge and cognitive ability of such goods. Therefore, the subject who can make the same or similar comparison should be the specific consumer group of this kind of goods, that is, the people who sell, buy, install and use this kind of goods. Taking ordinary consumers as the subject of infringement judgment does not require the people's court to pursue the opinions of real consumers when trying disputes over patent infringement of design, but requires the judge to put his position on the level of ordinary consumers and be familiar with and aware of the similarities and differences of comparison objects. (2) To judge whether the designs are the same or similar, the comparison method is generally used: 1, and visual inspection is adopted. To judge whether the accused infringing product is the same as or similar to the patented product of design, it should be judged according to whether the ordinary consumer will be confused when observing with the naked eye. For the part that can't be observed by naked eyes, it can't be analyzed and compared by means of instruments or chemical means. Observation should be based on the similarity and difference of the easily visible parts of the product. 2. Observe in isolation and compare directly. In the specific judgment, the patented product of design and the accused infringing product should be placed separately, and there should be a certain interval in time and space when observing. This isolated observation method can make the judges have an intuitive feeling about the two products, which is the first impression. Secondly, the two products are put together, and the appearance design of the two products is directly compared and analyzed by the judges, so as to describe the similarities and differences between them, raise the perceptual familiarity to the rational familiarity, and finally draw the conclusion whether they are the same or similar. 3. Overall observation and comprehensive judgment. To judge whether the appearance design of the accused infringing product is the same as or similar to that of the patented product, we should not only start from the local design, or separate the various parts of the appearance design, but also start from the whole, observe all its elements as a whole, and make a comprehensive judgment on the main components and innovations of the appearance design of the two products on the basis of the overall observation. There are two conditions for an accused infringing product to constitute infringement: one is that the accused infringing product contains the original part of the design patent (that is, the innovation point), and the other is that the accused infringing product is the same as or similar to the design patent product as a whole. (III) Determination of design points Design points are the main aesthetic parts of design patents created by designers, that is, the innovation points of design patents completed by designers through creative labor. When comparing the design of the accused infringing product with the design of the patented product, it is more acceptable to focus on the Ministry to see if the accused infringing product plagiarizes or imitates the original part of the obligee. The same or similar design is a necessary condition to constitute the same or similar design. Different and dissimilar designs are different and dissimilar designs and do not constitute infringement. In the application stage of patent right, most applicants did not clearly point out its main part; In the right granting stage, the examiner only pays attention to the overall effect of the design; In the authorization announcement, the patent administrative department of the State Council will not clearly distinguish which are the important parts of the patent. But as a part of the overall appearance, although scattered, it can usually be displayed in the view of patent announcement. The important part of appearance design is the main visual part that can attract the observation and attention of ordinary buyers and users. In practice, the practice of confirming important departments is inconsistent, some take the form of direct statement by the obligee, and some take the form of statement and cross-examination by the obligee and the accused infringer, which is confirmed by the court. No matter which method is adopted, it is the basic principle to determine the important department where the design innovation content of the right holder can attract the attention of consumers. (4) In the practice of judging the same or similar designs, it is not difficult to identify the same design. As long as the design of the accused infringing product is compared with the design of the patented product, if all the elements of the two are the same, it is the same design. It is more difficult to identify similar designs. The similarity of appearance design seems to mean that the appearance, pattern, color and combination of the accused infringing product and the patented product are basically the same, and some subtle differences are not enough to attract the attention of ordinary consumers, so that ordinary consumers confuse the two products and mistake them. When judging similar designs, the comparison method of design elements is widely used. At present, there are two views on the role of design elements in judging design similarity. One view is that designs should be the same or similar, regardless of whether other parts of the product are the same or similar, they should be considered as the same or similar designs. Another view is that only when the design elements are the same or similar, and the design elements are the main part of the product appearance, or the overall appearance of the product is the same or similar, can it be considered as approximate appearance design; If the proportion of design elements in the overall appearance of the product is small enough to affect the recognition of the overall appearance of the product, it should not be considered as approximate appearance design. The author agrees with the second view. Because whether it causes confusion and misunderstanding among ordinary consumers is determined by the overall appearance of the two products, whether it constitutes a design depends on the difference between the design and the known previous design, that is, the originality of the design, rather than the weight of the design part in the overall appearance of the product. For bulky products such as furniture, it is assumed that the design of a wardrobe is protected by patent, and the key part of its design is the handle on the door, while the wardrobe accused of infringement is the same or similar to it, and the rest is completely different, so ordinary consumers will not confuse the two wardrobes when they pay attention to the overall observation. In this case, it is obviously unreasonable and unfair to assume that the designs of the two kinds of furniture are similar. (5) The contrast order of the three elements shall conform to the provisions of Paragraph 3 of Article 2 of the Detailed Rules for the Implementation of the Patent Law. Appearance design includes appearance design, pattern design, design combining shape and color, design combining shape and color, and design combining shape and color. There are three elements that make up a design, namely, the shape, pattern and color of the patented product. Among the three elements, shape and pattern are the basis, and color is attached to shape and pattern. The color separated from the shape and pattern can not be used as a design scheme for patent protection of design in China's current patent law. In this sense, color protection is subordinate. In view of this, when comparing the appearance design of the two products, the order of appearance, pattern and color should generally be followed. When judging whether the design composed of shapes, pictures and colors is the same or similar, we must first judge whether the shapes are the same or similar. If the shapes are different or similar, we can conclude that the designs are different or similar, and there is no need to compare the patterns and colors. If the appearance is the same or similar, but it belongs to the well-known previous design, it should be further determined whether the patterns are the same or similar, and whether the patterns are different or similar, so it can be determined that the appearance design is different or similar, and there is no need for color comparison; If the patterns are the same or similar, but belong to the known prior designs, it is judged whether the colors are the same or similar. Different or similar colors do not constitute the same or similar design, but the same or similar colors constitute the same or similar design. Among the three elements, appearance is the most important, and the judgment of infringement should be based on comparative appearance. If the appearance of the product is initiated by the patentee, and the accused infringing product uses the appearance and adds patterns, no matter what patterns are added to the accused infringing product, it shall be deemed as infringement. To sum up, the identification of design patent infringement generally goes through the following steps: on the basis of determining the protection scope of design patent right, examine whether the accused infringer has manufactured, sold or imported products similar to the patented products of design for production and operation purposes without the permission of the obligee, and if so, compare the design of the accused infringing product with the design for which the obligee applied for a patent. Judge whether the design of the accused infringing product belongs to the protection scope of the design patent right of the obligee. If the design of the product accused of infringement is the same as or similar to the design of the patented product of the obligee, it shall be regarded as belonging to the protection scope of the patent right for design, which constitutes the patent infringement of design. Specifically, under the following circumstances, the accused infringer shall be deemed to have infringed the patent right of the design holder: the products are the same and the designs are the same; The product designs are the same and similar; The product is a similar product with the same design; Products are similar products with similar designs. In a word, judging design patent infringement is a technical and legal work. In the process of judgment, we should not only grasp the principles, but also use various methods. Only in this way can the conclusion be objective, fair and reasonable.