HongFangLaw ~ Chinese IP Law Updates ~ n’ 63
10 August 2018

A View on the State of Variation against Reference Views – How do they impact a design patent’s scope of protection?

Co-authors: Jessica Li, Shirley Lin

As Article 59.2 of the Patent Law states, “For the patent right of an invention or utility model, the scope of protection shall be confined to what is claimed, and the written description and the pictures attached may be used to explain what is claimed.” Requirements for pictures are further stated in the Guidelines for Patent Examination, “Concerning the relevant views and stereoscopic drawings or photographs, so far as a product with a three-dimensional design is concerned, if the essential features of the design of the product involve six sides, the applicant shall submit orthographic projection of six-side views; if the essential features of the design of the product involve the view from one side or several sides only, the applicant shall submit at least orthographic projection view and space diagram of the side concerned.

So far as a product with more simple design is concerned, if the essential features of the design of the product involve the view of one side only, the applicant may submit the orthographic projection view of the relevant side alone; if the essential features of the design of the product involve the view of two sides, the applicant shall submit the orthographic projection views of the two relevant sides. The applicant may also submit, if necessary, the complete view, cutaway view, sectional view, enlarged view, and view of the state of variation.

In addition, the applicant may submit the reference views. Reference views are usually used to indicate the purpose, method or place of use of the product incorporating the design.” There is no doubt from the above statements that orthographic projection and space diagram dictate the scope of a design patent’s protection, but regarding the view of the state of variation and reference views, the influence is left unclarified. This article will aim to illuminate how the latter pair would affect the protection scope, we will start by defining the terms.

According to the Guidelines, “A product of variable states means a product that can be in different states when on sale or in use.” That is why the view of a state of variation could be necessary. Again the guidebook mentions “reference views are usually used to understand to which field the product belongs, where the product is to be used, its use or purpose of use, in order to ascertain the classification.” It thus follows that the view of a state of variation displays a product’s state at some point, while reference views have other jobs to do. Therefore, a design patent’s scope of protection could be said to be confined by the view of the state of variation while reference views do not take on this role.

With the lack of explicit provisions on how the view of a state of variation and reference views relate to protection scope, left untouched in both the Patent Law and its Implementing Rules, the issue has long been debated by academics and professionals alike. However, official views are not missing: “Regarding a design patent on a product of variable states, if an allegedly infringing design is identical or similar to the design in all the various states of use as illustrated in the view of the state of variation, the People’s Court shall find that the allegedly infringing design falls within the protection scope of the patent right; if the allegedly infringing design lacks the design of one state of use or is neither identical nor similar to the design in a state of use, the People’s Court shall find that the allegedly infringing design does not fall within the protection scope of the patent,” as stated in Article 17 of the Interpretation on Several Issues Concerning the Application of Law in the Adjudication of Patent Infringement Dispute Cases by the Supreme People’s Court (II) (2016), in addition according to Article 92.2 of the Guidelines for Patent Infringement Determination (2017)“Reference views are usually used to indicate the purpose of use, the method of use or the place of use, etc. of the product incorporating the design, and cannot be used to determine the protection scope of the design patent of a product of variable states,”. Such statements offer support for our conclusion above.

HFL’s Comments:

A distinction should be made as to the roles of reference views and the view of the state of variation when ascertaining the scope of protection of a design patent. Reference views usually serve as an indication of the products method, purpose or function of use whereas the other works complementarily with the product’s six-side views to show its variable states, if applicable, when in use. Therefore, the view of a state of variation should be a factor for determining to which extent a design patent should be protected. With reference, the view also draws boundaries for such patent rights.

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