Weifeng LIN | Jul 28, 2021

The Supreme People's Court of China first formally introduced the concept of "design freedom" in Article 14 of the Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Patent Infringement Disputes effective in 2016.ⁱ Since then, "design freedom" has frequently been applied to design retrieval, design infringement, and invalidation analysis. It allows practitioners to conduct more objective analysesas well as predict court judgments with greater accuracy. This article will detail how to apply "design freedom" for patent design infringement analysisvia an example.

Determination of design freedom

We can summarize the basic steps on how to define the degree of design freedom of a design patent as follows:

Step 1: identify all features of the design patent.
Step 2: ignore the following features: design features mainly determined by technical functions; the material, internal structure of the product.ⁱⁱ
Step 3: search prior arts based on the overall appearance of the design patent to retrieve a set of existing designs in which each existing design is similar to the design patent.
Step 4: compare the features of the design patent with each one of the prior arts, and select the features that do not appear in any one of the prior arts which we can refer to as the distinguishing features.
Step 5: constitute a designer’s degree of freedom of the design through analyzing the distinguishing features.

Conclusion: if the number of distinguishing features is relatively high in the total number of design features, we may accordingly conclude that there is a high degree of design freedom with regard to this product appearance

The following example describes the use of design freedom in the analysis of an automobile design infringement. As a brief illustration, this example only discusses the features in the rearview:

Step 1: identify all features of the design patent.
Feature 10: rear top cover
Feature 11: rear windshield
Feature 12: tailgate
Feature 13: rear bumper；
Feature 14: rear top cover brake light
Feature 15: tailgate handle
Feature 16: rear lights
Step 2: ignore functional, structural, material features, and consequently features 10-16 above are retained.
Step 3: search prior arts and retrieve a set of 5 (number of hits may affect the accuracy of the analysis) existing designs, which are similar to and disclosed prior to the priority date of the design patent.
Step 4: compare the features of the design patent with each one of the prior arts, and select the features that do not appear in any one of the prior arts.
Feature 10 (rear top cover): no existing design discloses the same or similar feature [percentage of disclosure: 0/5]
Feature 11 (rear windshield): 4 existing designs disclose the same or similar feature [percentage of disclosure: 4/5]
Feature 12 (tailgate): [percentage of disclosure: 0/5]
Feature 13 (rear bumper): [percentage of disclosure: 0/5]
Feature 14 (rear top cover brake light): [percentage of disclosure: 0/5]
Feature 15 (tailgate handle): [percentage of disclosure: 4/5]
Feature 16 (rear lights): [percentage of disclosure: 0/5]
Step 5: constitute a designer's degree of freedom
Accordingly, features 11 and 15 are common designs. Features 10, 12, 13, 14, and 16 differentiate the design patent from the prior arts and thus constituting the degree of freedom of the designer.

Conclusion: Based on the existing designs, it can be seen that for the whole three-dimensional design of automobile products, there is a high degree of design freedom concerning the percentage of distinguishing features, the layout of components, the mutual position, and the dimension proportion of components.

Utilization of design freedom
Based on the above conclusion of design freedom, we can further analyze the accused infringing product and the design patent as follows:

The outlines of the rear top cover (10), rear windshield, tailgate (12), rear top cover brake light (14), and tailgate handle (15) are basically identical. However, the outlines of the rear lights (16) of the two have a slight difference. Specifically, the rear lights on the accused infringing product form a three-layer stack, where the upper and lower light units are obviously protruding with respect to the middle one. The rear bumpers (13) of the two are also slightly different as shown. The bottom line of the rear bumper of the accused infringing product is a horizontal line, while the bottom line of the rear bumper of the design patent reflects upward curves at the left and right ends.

From the perspective of an ordinary consumer, as compared with the design patent, these minor differences do not contribute to a significant visual effect on the overall appearance (only rear view in this example). An ordinary consumer can't notice these differences with general attention, and these differences only account for a small proportion of the overall appearance (only rear view in this example).

After an overall observation, comprehensive judgment, and analysis of the main parts of the accused infringing products and the design patent, it can be found that the shape, size, and scale (length, width, and height) of the two are basically the same, and the position of each component in the entire vehicle is also the same. Therefore, it can be considered that the accused infringing product is similar to the design patent, and there is a greater chance of constituting an infringement.ⁱⁱⁱ

Patent holders can conduct specific analyses based on specific cases to obtain the broadest protection.

ⁱ Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of Law in the Trial of Patent Infringement Disputes (2016)
Article 14
When determining the level of knowledge and discriminability of an ordinary consumer to a design, the people’s court shall normally consider the design freedom of the products in the same or similar category as the patented design at the time of infringement. Where there is a high degree of design freedom, the people’s court may determine that it is usually unlikely for an ordinary consumer to notice the minor differences between the compared designs; where there is a low degree of design freedom, the people’s court may determine that it is usually more likely for an ordinary consumer to notice the minor differences between two compared designs.

ⁱⁱ Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of Law in the Trial of Patent Infringement Disputes (2009)
Article 11
The people’s court shall make a comprehensive judgment in view of the overall visual effects of the design based on the design feature(s) of the patented design and the accused infringing product when determining the identity or similarity of designs. The design features that are mainly determined by the technical function and the features that do not affect the overall visual effects such as product material, internal structure and so on shall not be considered.

ⁱⁱⁱ Article 8
Where a design which is identical with or similar to the patented design is used on a product which is of an identical or similar type to the design product, the people’s court shall determine that the accused infringing product falls into the scope of protection of design patent right as prescribed in Paragraph 2, Article 59 of the Patent Law.