The main legal grounds for judging design patent infringement is a principle of “comprehensive judgment based on overall visual effect” prescribed by Article 9-11 of Judicial Interpretation I Regarding Issues of Application of Law in Patent Infringement Cases (referred to as Interpretation I in the following context). However, with the development of judicial practices, the above principle is gradually not keeping up with the times, especially not adequate enough on reviewing innovative points on partial appearance.

    Therefore, Judicial Interpretation II Regarding Issues of Application of Law in Patent Infringement Cases (referred to as Interpretation II in the following context), issued recently in April 2016, introduces concept of “Design Space” in Article 14 thereof. “Design Space” mainly refers to the designer’s creation freedom on the design of products, i.e. the creation space without considering the common knowledge, common changes, functional design and non-decorative designs. The design space of specific product is closely related to the common consumers’knowledge level and cognitive ability to distinguish this design product from its same or similar type of design products.

    Generally speaking, regular products existing on the market for long have somewhat relatively small design space, e.g. TV, wheel, etc., as the product has been well recognized by the public; on the contrary, new products just shown on the market have somewhat comparatively large space, as the public is not familiar with such new products, e.g. cleaning robots, air cleaners, etc. The designer always has a high degree of freedom in designing a product with such large design space. This kind of product is various in types and forms and the common consumers are in the process of learning the new products and usually do not pay attention to the minor differences in partial subtle designs. For the products with small design space, the designer will have a low degree of creation freedom, as the consumers are quite familiar with this kind of products and a minor difference between the partial subtle designs, and even a little improvement, will be noticed.

    In fact, the concept of design space has been widely applied by courts in judicial practices. The Judgment (2015) Shanghai High Court IP Case Final Instance No. 20 reviews a design infringement on a type of kettle. The Court is holding that this kind of kettle product has a small design space and the differences between the accused infringing product design and the related design patent are all embodied on parts that can be easily noticed in use, i.e. the kettle cover, handle, kettle base, etc. A common consumer with common knowledge level and cognitive ability would be certain to recognize the apparent differences between the accused infringing design and the design patent; therefore, their overall visual effect should not be considered as identical or similar.

    There is another example. The Judgment (2014) Zhejiang High Court IP Case Final Instance No. 255 reviews a design infringement on a camping light. The Court is of the opinion that although the designs of “thick top and thin bottom”, “transparent lampshade”, lamp base, etc are common in camp light products, there is still a large design space for the overall shape, the shapes of the components, and the proportion among the components. Since the accused infringing product has the same overall design features as the related design patent, the differences between the infringing design and the patent design are too subtle to be noticed by common consumers as far as the overall appearance is concerned. Therefore, the accused infringing product is determined to constitute design infringement based on “similar overall appearance”.

Further, Article 15, 16 and 17 in Interpretation II also provide legal grounds to determine patent infringement on products in sets, assembled products and products with changing status.

    As to products in set, the infringement determination is based on one design out of the whole set. Only if the accused infringing product is identical as or similar with any one out of whole set of designs, the design patent infringement will be established. The Judgment (2014) Zhejiang High Court IP Case Final Instance No. 85 reviews a design patent infringement on a patented lock panel and handle. In this set of design, the lock panel and the handle are respectively protected by the design patent. The court believes the accused infringing product is identical as or similar with one out of the design patent and thus constitutes the infringement. In this case, one set out of the whole design, i.e. the handle, is considered to constitute the design infringement.

    Regarding assembled products, two situations should be considered. As to the products having the one and only assembling pattern, the basis to determine design infringement is the assembled design. The accused infringing product will constitute infringement in the situation that the product is identical as or similar with the assembling design. As to the products having various assembling possibilities, the basis to determine design infringement is the design of every individual part of the assembled product. The accused infringing product will constitute infringement in the situation that every part of the accused infringing product is identical as or similar with the design of every individual part. The Judgment (2015) Beijing High Court IP Case Final Instance No. 3072 has applied the above concept. This case involves a design of assembled toy that includes 49 parts which should be assembled for use. The assembling possibilities of the toy are various. The accused infringing products in this case are “the toy respectively for level 1, level 2 and level 3 of kindergarten children” including every parts identical as all the 49 parts of the related design patent, and therefore, the court determined that the accused infringing product was within the protection scope of the involved design patent and constituted an infringement.

    For the product with changing status, the basis to determine design infringement is all its changing status. In the situation that the accused infringing products are identical as or similar with the all changing status designs shown by changing status drawings of the design, they shall constitute infringement. The Judgment (2015) Beijing High Court IP Case Final Instance No. 1070 is holding that the drawings of the changing status of the product in use shall be taken as the grounds to determine the protection scope of the design. Moreover, this judgment rectified the opinions of the First Instance Court and ascertained that “drawings of using status of the related design should be considered to belong to drawings of using status of status changing products, which should be the basis as protection scope of the design patent. First Instance Court wrongly believes that the drawings of using status of the design patent is used to explain the using method or usage of the related design to determine the type of the product and should be the basis to determine patent infringement and also made a mistake to ascertain the using status drawing as schematic drawing of using status. The Second Instance Court rectified the above opinions.” This case further held that the determination of design infringement on status changing products shall be based on all using status drawings of one design patent.

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