Subtle changes to challenging design patents in China

From John Wu of Rouse China comes a note of subtle changes to the approach to challenging design patents in China...

According to the current Chinese patent law that took effect on 1 October 2009, in order to be patentable a design must comprise one or more distinctive features when compared with a combination of existing designs or features. Under the previous law, the features illustrated in one existing design could be referred to for testing the patentability of a new design, together with features which could be said to be commonplace. This is a subtle change in the law that can catch people out.

There are likely to be only limited cases in which a design may be challenged for patentability by combining the features present in more than one existing design, e.g. it may be said that the new design is a simple transformation of a prior design. To do this, a single closest prior design should be selected and compared with the new design, before another design is referred to in order to establish the “simple transformation”.

Unlike the old law, where it would have been possible to establish this transformation by simply arguing that certain features not found in the prior design are “ordinary features in the art”, it will now be necessary to go further. It is most probable under the new law that in an invalidation trial, a petitioner may need to find solid evidence to prove that certain features, found in the subject design but not illustrated in the closest prior design, are customary features and therefore not distinctive. If the petitioner wants to argue that the subject design is not distinct, it may be necessary under the new law to identify another prior design to illustrate those which he argues are customary features. Thus challenging patentability of Chinese design patents may require a bit more effort than previously.