Design Patent v. Utility Model Patent: Conflicting Applications?

Feynman Z. LIANG | Aug 2, 2016

According to the Patent Law of People’s Republic of China,

Article 22 Inventions and utility models for which patent rights are to be granted shall be ones which are novel, creative and of practical use.

Novelty means that the invention or utility model concerned is not an existing technology; no patent application is filed by any unit or individual for any identical invention or utility model with the patent administration department under the State Council before the date of application for patent right, and no identical invention or utility model is recorded in the patent application documents or the patent documentations which are published or announced after the date of application.

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In China, an "existing technology" is termed as “prior art” while the patent application that is filed for "any identical invention or utility model" "before the date of application for patent right, and "published or announced after the date of application” is termed as “a conflicting application”. Thus, if the technical solution has been disclosed either in prior art or in a conflicting application, the technical solution is not novel.

In another word, novelty of the patent can be affected by "a conflicting application" of patent which is filed before the application date of the patent and published after the application date of the patent. Can a design patent be a conflicting application of a utility model patent or a invention patent?

In 2015, Patent Reexamination Board (hereafter referred as “PRB”) issued a decision, declaring that claim 1 to 4 of Chinese utility model patent No 201120184716.3 (hereafter referred as "this patent") entitled “a infrared controller for flying vehicle” invalid on the ground of lack of novelty in view of reference document 1 (hereafter referred as "RD1").

Claim of this patent
1. A Infrared controller for flying vehicle, comprises a controller body (1), characterized in that the said controller body (1) is provided with a bat surface (2).



In this case, the application date of the utility model patent (this patent) is 3 June 2011. The RD1 is a design patent with publication no. CN301742475S. The design patent RD1 was filed on 4 May 2011 which is before the filing date of the utility model patent (this patent) and published after the filing date of the utility model patent (this patent). The PRB decided that

1. Both the design patent (RD1) and the utility model patent (this patent) relate to the field of infrared controller for flying vehicle.
2, Figures of the design patent (RD1) have disclosed all technical features of the utility model patent (this patent).
3. Although the design patent (RD1) does not disclose the technical problem to be solved, the design patent (RD1) and the utility model patent (this patent) share the same structure and both solutions relate to the same technical field, therefore, the design patent (RD1) solve the same technical problem as the utility model patent (this patent).

To sum up, PRB held that the design patent (RD1) was substantially identical to the claimed technical solution of claim 1 of the utility model patent (this patent) and the design patent (RD1) shall be deemed as a conflicting application of the utility model patent (this patent). Therefore, claim 1 shall not be novel in view of the design patent (RD1) and it shall be declared invalid. Claim 2 to 4 directly or indirectly depend on claim 1, further defining element(s) of claim 1. While claim 1 was lack of novelty, claim 2 to 4 were not novel in view of the design patent (RD1).

The patentee of the utility model patent (this patent) was not satisfied with the decision and filed a complaint against PRB before Beijing IP Court on 2 Apr 2015. After hearing of case, the court issued a judgment overturning PRB's decision.

During examination of the case, the court determined that the focus of argument lied in whether the design patent (RD1) should be deemed as a conflicting patent.

The court pointed out that the purpose of introducing the concept of "conflicting application" into novelty was to prevent double patenting.

Inventions, according Article 2 of the Patent Law, mean "new technical solutions proposed for a product, a process or the improvement thereof." Utility models denote "new technical solutions proposed for the shape and structure of a product, or the combination thereof, which are fit for practical use." The object of protection for both utility model patent and invention patent is technical solution. In this case, the object of claim 1 of the utility model patent (this patent) is the technical solution defined in claim 1. Figures in the utility model patent (this patent) help to explain the claims only. The patentee is entitled to exclude anyone from implementing the technical solution of claim 1 but he is not entitled to stop others from using the design represented in the figures of the utility patent if different technical solution is used.

Designs, on the other hand, means "with respect to a product, new designs of the shape, pattern, or the combination thereof, or the combination of the color with shape and pattern, which are rich in an aesthetic appeal and are fit for industrial application". The object of protection of design patent is design of product which is different from technical solution as protected by utility model patent and invention patent.

The court held that since the objects and scope of protection incurred by a design patent and a utility model / invention patent were completely different, a design patent shall not be a conflicting application for a utility model patent. In this case, the design patent (RD1) should not deemed as a conflicting application for claim 1 of the utility model patent (this patent) and therefore, claim 1 shall be held valid.

The court further noted that, while a design patent shall not be a conflicting application for a utility model patent, a design patent published before the filing date of a utility model patent/ invention patent can be a prior art of the patent if the technical field, technical solution, technical problem to be solved and technical effect of the utility model patent/ invention patent have been disclosed in the published design patent.

Jiaquan IP Law Represented the Patentee in this case.