Design Patent Infringement in China: Scope, the Overall Impression Test, Defences and Damages

The five largest design offices (ID5) have just closed their project on a user guide for digital design applications (ID5 Offices Close Digital Design User Guide Project). Filing is only the first step. A design patent shows its value when someone copies the look of your product in China. Whether you can sue, how a court compares the designs and what the other side will argue all follow settled rules. This guide sets them out under China's Patent Law (2020 amendment) and the Supreme People's Court's Interpretation on patent infringement cases (Fa Shi [2009] No. 21). The Interpretation cites the article numbers of the 2008 Patent Law; this guide uses the current numbers. It is general information; a specific case needs professional advice.

The scope is the drawings, not your product

Under Article 64(2) of the Patent Law, a design patent protects the design of the product as shown in the drawings or photographs, and the brief description can be used to interpret them.

So infringement is judged against the drawings filed, not against the product you sell today. If you have since restyled the product, the new features are outside the patent. How clear and complete the views were at filing decides how useful the patent is later. See Design Patents in China: Partial Designs, GUIs, Similar Designs and the Six-Month Grace Period.

What counts as infringement

Under Article 11(2), once a design patent is granted, no one may make, offer to sell, sell or import the patented product for production or business purposes without permission.

Unlike inventions and utility models, "use" is not on that list. Buying a copy for your own use, or using someone else's product as a tool, does not infringe a design patent.

Building an infringing product into another product as a component and selling it is normally treated as selling, unless the component serves only a technical function in the new product (Interpretation, Article 12(2)).

How courts decide "identical or similar"

Article 8 of the Interpretation sets two conditions, and both must be met:

• Identical or similar kind of product: judged by use, with reference to the brief description, the international design classification, the product's function and how it is sold and used (Article 9). A product with a completely different use generally does not infringe, however alike it looks.
• Identical or similar design: judged by the knowledge and perception of an ordinary consumer of that kind of product (Article 10), based on the overall visual impression (Article 11).

Article 11 sets out how the overall impression is assessed:

• Design features dictated mainly by technical function, and materials or internal structure that do not affect the overall impression, are ignored.
• Parts easily seen in normal use weigh more than parts that are not.
• The features that distinguish the patented design from earlier designs weigh more than its other features.
• No difference in overall impression means identical; no substantial difference means similar.

The two usual defences

Prior design: a defendant that proves its design was already known before the filing date does not infringe (Patent Law, Article 67).

Invalidation: design patents are not substantively examined, so defendants often ask CNIPA to invalidate the patent at the same time. A court may ask the patentee for a patent evaluation report (Article 66); obtain one before you sue. How the two run in parallel is covered in Suing for Patent Infringement in China? Expect an Invalidation Request: Stays, Timing and Outcomes.

A seller that offers or sells infringing products without knowing they infringe, and can prove a lawful source, does not pay damages (Article 77). In practice the focus with retailers is stopping sales and tracing the supplier; damages come from the manufacturer.

Damages

Under Article 71, damages are based on the patentee's actual loss or the infringer's profit, or failing that a multiple of a reasonable licence fee. For wilful infringement in serious cases, one to five times that amount can be awarded. Where none of these can be established, the court can award RMB 30,000 to RMB 5 million. Reasonable costs of stopping the infringement are added.

First steps when you find a copy

• Check the patent is in force and the annual fees are paid.
• Fix the evidence by notarised purchase or a trusted timestamp: the product, the listing, the order and the payment.
• Compare the copy with each view of the registered drawings, focusing on the parts easily seen in use.
• Request a patent evaluation report.
• Then choose the route: a marketplace complaint, a request to the local IP office, or a court action.

Frequently asked questions

The copy changes the colour and some patterns. Is it still infringing? It depends on whether the overall impression differs substantially. Changes to parts that are hard to see, or small adjustments, often still leave the designs similar; clear changes to the main visible parts may not.

Our registration is a partial design. The rest of their product is different but that part is the same. Does it count? The general view is that the comparison is based on the claimed part. There is not yet a uniform written rule on how partial designs are compared in infringement cases, so it depends on how the court assesses the case.

How long does a Chinese design patent last? Fifteen years from the filing date for applications filed on or after 1 June 2021 (Article 42). Designs filed on or before 31 May 2021 keep the old ten-year term (CNIPA Announcement No. 510, Article 11).

Qingdao Jiancheng Intellectual Property Agency Co., Ltd., founded in 2008, is a CNIPA-recorded trademark agency. We help foreign businesses protect their brands and IP in China.