Apr 6, 2020 | Implications of Combination Technique in Invalidity of Design Patent

The second paragraph of Article 23 of the Patent Law of the People’s Republic of China stipulates: ” Any design for which patent right may be granted must not be identical with and simi1ar to any design which, before the date of filing, has been publicly disclosed in publications in the country or abroad or has been publicly used in the country, and must not be in conflict with any prior right of any other person.” However, the question whether a design patent has an obvious distinction from existing combinations of design distinctive features shall be determined by taking into account of the difference between the combined design and the overall visual effect of this patent, and the implication of combination techniques between design distinctive features. If the distinctive features of the existing design are put together and compared with this patent without considering the implication, it will inevitably fall into the “mechanical dogma”. Therefore, the determination of whether the combination technique has an implication is the focus and difficulty in cases of design patent invalidity. This article mainly discusses the relevant combination techniques without implication that are more easily overlooked by the requester in the design patent invalidity practice.

Interpretation of relevant regulations on combination techniques and implication

The Guidelines for Patent Examination (2010) provides a specific description for combinations without obvious distinction as stipulated in Paragraph 2 of Article 23: the patent in question is based on the existing design or the combination of the distinctive feature of the existing design. The existing design is identical to or slightly different from the corresponding part of the patent in question; and the specific combination technique has an implication on the existing design that is identical to or similar to that type of products. Therefore, 3 conditions have to be satisfied in order to rule that it is a combination without obvious distinction: (1) the combination consists of more than one existing design or existing design features; (2) the existing design and the corresponding design part the patent in question are identical or slightly different; (3) There are implications in the combination technique. As to condition (1), it is essentially asking whether there is an implication in that combination technique.

The question of whether there is a combination inspiration is actually asking whether the process of obtaining the patent in question by combining more than one existing design or existing design features can easily be come up with. It is to avoid the situation of plagiarism. As an intellectual property agent, when acting for your client in the declaration of invalidity of design patents, you should pay extra attention to whether there is any implication in the relevant combination technique in order to win the case.