Patent Invalidation citing “Transformations”
Invalidation Procedures in regards to “Transformations” clause for Design Patents
Author: Stefanie Rao
1. “Transformations” in Laws and Regulations
According to Article 23.2 of the Patent Law, any design for which patent rights may be granted shall significantly differ from prior design or the combination of prior design features. That’s to say, a design patent to be issued (hereinafter referred as “the patent concerned”) would be invalided if it’s not significantly different from prior design or the combination of prior design features (hereinafter referred to as “the comparative patent”).
With respect to the invalidation, the person making the request (hereinafter referred to as “the petitioner”) shall submit the comparative evidence between the patent concerned and the comparative patent while how to compare shall be meeting certain terms in the Guidelines for Patent Examination (hereinafter referred to as “the Guidelines”).
With regard to the Guidelines on Examination in Accordance with Article 23.2. The patent concerned must significantly differ from prior design or the combination of prior design features in three circumstances, first, is “the patent concerned is not significantly different from the prior design of the product of the same or approximate category”, the second is “the patent concerned is transformed from the prior design, the design features of the two are identical or only have very slight difference, and there’s an inspiration for the specific transformation in the prior design of the product of the same or approximate category”.
Thus transformation shall be applied in invalidation procedure when the patent concerned and the prior design are in different categories.
The Guidelines further rules the following types of transformation circumstances, where there is an obvious inspiration for the transformation:
(1) the design which simply adopts a basic geometric shape or only slightly changes it;
(2) the design which simply simulates the original form of a natural object or natural scenery;
(3) the design which simply simulates the entire or partial shape, pattern, color of the well-known building or work;
and (4) the design for a product like a toy, decoration, food, which is transformed from the design of other categories of products.
If the transformation is involved in one of the four above circumstances, then the petitioner does not need to search for the evidence proving the inspiration of the transformation. If it does not belong to these, then the petitioner should also provide the evidence proving that the transformation exists in the prior design.
2. Confirmation of “transformations” in design patent invalidation procedures
The analysis of specific cases can help us to know and understand a specific regulation. Therefore, we searched the relevant examination decisions. On the official website of the patent office, we searched the keywords of “transformation” as the key point of the decision.
In total, we searched 21 examination decisions on the request of invalidation of a design patent, 12 of which approved the reason for transformation, and because of the patent concerned had no significant difference with transferred design by prior design or combination, it was invalided.
The 9 decisions did not support the reasons for the transformation or had significant differences through comparison, thus maintaining the validity of the patent.
Through the analysis of the above cases, it is found that the transformation which can be accepted by the examiner are, as follows:
(1) It belongs to the circumstance of obvious inspiration for the transformation listed in the Guidelines, such as a request for invalidation for the design patent named “Toy (Bieber)” , the patent concerned is a toy in infant shape, the evidence provided by the petitioner as a comparative design is a real baby photo, and it is claimed that there is no significant difference between the design transferred of the infant and the patent concerned. The reason for the transfer is supported by the examiner, who believes that “the transfer of the shape of a real baby onto a toy belongs to the circumstance of transformation listed in the Guidelines”
(2) Although it does not belong to obvious inspiration for the transformation listed in the guidelines, the inspiration for transfer in the prior design can also be compared as the prior design. For example, in the request for invalidation of the design patent named “Cup (1661)” , the examiner thought that the transformation had applied the “Minions” cartoon modeling to the cup production according to the evidence, so there’s an inspiration of transferring cartoon modeling into cups, thus in this case with the same inspiration that the cartoon modeling of “Kumamon” can also be transferred into cups, and then compared with the patent concerned.
(3) If there are relevant transformation evidence, and the combination of prior designs is also acceptable. In the part of the examination in accordance with Article 23.2 of the Guidelines refers that if the patent concerned is transformed and combined from the prior design, the judgment shall be made based on the comprehensive observation. In the request for invalidation of the design patent named “Telephone (piano type)” , the patent concerned is a telephone with piano appearance, and the prior design evidence provided by the petitioner includes the telephone with a piano type (referred to as “comparative design 1”) and the piano (referred to as “comparative design II”). The examiner thinks that comparative design 1 gives the inspiration for transferring the piano shape to the telephone. Therefore, we can combine the comparative design II with the comparative design 1, and then compare it with the patent concerned.
In addition, when using “transformation” in the invalidation request, it is necessary to accurately grasp the requirements of the Guidelines for “inspiration”, especially when the comparative design does not belong to the obvious transformations listed in the Guidelines, the petitioner is required to prove the transformation fall into the prior design, otherwise, the examiner is likely not to approve the reason for the transformation.
For example, according to the request for invalidation of design named “Table Frame for Adhesive Sweeper”, the evidence submitted by the petitioner includes “light tube bracket” belonging to lighting equipment and “lamp holder” belonging to distribution equipment, while the patent concerned is daily use.
Although the prior design is similar to the appearance of the patent concerned, there is no evidence to prove that there is a prior design that applies the appearance design of lighting equipment or power distribution equipment products to daily necessities (the same or similar type as the patent concerned), so the examiner thinks that the prior design provided by the petitioner does not belong to the same or similar type of product with the patent concerned, which is neither, obviously, cause of inspiration as ruled by the Guidelines, nor does it prove that there is corresponding transferred inspiration, thus the prior designs cannot be used as a comparative design for comparison with the patent concerned.
3. Grasping the “transformation” clause in the design patent invalidation procedures
In the sections of the examination in accordance with Article 23.2 of the Guidelines, they are certain rules on “circumstances of no significant differences” and “circumstances of obvious inspiration for transformation” without miscellaneous provisions, therefore, we should understand them strictly according to its semantics, not expand on it at will.
Such as “the design for a product like a toy, decoration, food, which is transformed from the design of another category of the product” on the Guidelines, in this circumstance only the tree types can apply to “obvious inspiration”, and it can’t be extended to other kinds of products.
In the invalidation procedure of design patent, the petitioner should strictly observe the examination rules, if the prior design and the patent concerned are in different categories then they can be compared separately or in combination, so the transformation would be regarded as a clause.
The petitioner can know which transfer method applied in the patent concerned by comparing the prior design and the patent concerned, if the transfer does not belong to the circumstances ruled in the Guidelines, at this time the petitioner should search evidence on proving the transfer has fallen into the prior design. Otherwise, this evidence about prior designs searched by the petitioner would not be available for comparison with the patent concerned.
 Examination Decision on Petitions for Invalidation Announcement No.37204;
 Decision on Petitions for Invalidation Announcement No.40335;
 Examination Decision on Petitions for Invalidation Announcement No.19036;
 Decision on Petitions for Invalidation Announcement No.42740.