Introduction


In the fourth amendment of China’s Patent Law, partial design patent is included to comply with the international trend and reinforce the protection on a certain part of the innovative design. Recently, with the amendment and enforcement of the Detailed Rules for the Implementation of the Patent Law and the Guidelines for Patent Examination, partial designs have started to be granted one after another, including three for which the author acts as the agent.


What is partial design patent?


Design patents is set to protect shapes, patterns, colors or their combination of an industrial product. Formerly, Design patents could only seek whole protection attached to the product itself, following the principle of ‘whole observation, comprehensive judgment.’ However, with the product system tends to be saturated, design freedom for product’s whole appearance becomes increasingly limited. In other words, the focus of design patents is naturally shifted to partial shapes, patterns or their combination, which is also a characteristic feature of partial design protection.


Why partial design is required?


In the judgement of patentability for whole design, if the innovative design is confined in a specific part that holds a less notable position in the whole product."a normal consumer" is less likely to notice the minor difference based on the "whole observation" principle, resulting in difficulty in obtaining a patent for such design.


The torch shown in the following figure, for instance, have an innovative design of five parallel rings arranged at the connection between the torch nozzle and its main body. Compared to the whole design of the torch, this connection part is obviously in a less notable position and may not easily attract attention and obtain patent protection. That is, if an alleged infringer uses the same design of five rings but makes slight modification to other more notable design elements (such as the nozzle or the grip), it is possible to evade the risk of patent infringement over the whole design patent.


On the contrary, in partial design patent, the connection part becomes the focus of attention and protection, and thus can effectively prevent the evasion.



How to apply for a partial design patent?


According to the Guidelines for Patent Examination 2023, Applicants should submit a drawing of the whole product in which the part to be protected should be shown in solid lines in combination with dashed lines. The part with solid lines refers to the innovative part within the protection scope, while the part with dashed lines refers to non-innovative part excluded from the protection scope. Then the author will provide a detailed explanation based on successful experience. 



For a wireless earphone (see above), the left figure shows a traditional whole design, and the right figure shows a partial design. In this case, the eggshell-shaped design for the back part of the earphone, symbolizing "new life", is the part to be protected, while the main body of the earphone (including the earpiece) is not. 


The fundamental reason for why only the back part of the earphone is seek to be protected is the differentiation from traditional earphone products. The back part and main body of this "new life" earphone is designed to magnetic components, allowing users to select and combine freely. In other words, if applying for whole design patents, each potential combination requires a separate application, which would undoubtedly waste patent application resources and even lead to irregular patent applications in China. By applying for partial design patents, one patent will be worth a hundred. In this situation, regardless of which main body is used in combination with the similar earphone back part, it would fall within the protection scope of the patent.


It should also be noted that if only the back part of the earphone is applied for a whole design patent, there may be difficulties in granting due to the excessively wide protection scope. The reason is that the eggshell-shaped design is rare in the field of earphone accessories, yet it is more common in similar fields such as clothing accessories, which diminishes its innovativeness.


Author’s review


In patent infringement cases, Design patent cases are considered as “a cinch” for its simplicity in evidence collection and clarity comparison. The recent amendment not only clarifies the protection of partial designs but also extends the protection duration to 15 years. it will greatly strengthen the protection of design patents, bringing about the following changes:


For applicants of design patents, accurately distinguishing innovative designs from non-innovative ones through solid and dashed lines will become an unavoidable challenge. Especially for irregularly shaped three-dimensional products, determining the boundary between solid and dashed lines often requires the assistance of patent attorneys to provide comprehensive advice from multiple perspectives of patent invalidation and litigation. In addition, beyond the combination of dashed and solid lines, other methods are also permissible. These methods include the use of translucent layers in renderings and the use of dotted lines as auxiliary demarcation lines (which is essentially consistent with British regulations). These contents will be presented in further detail in subsequent articles.


For producers of design products, in the process of monitoring competitors' design patents, it is necessary to expand the search scope to partial designs, analyze infringement probability in detail, and eliminate infringement risks in advance.


For patent agencies, it is crucial to reserve talents and conduct training of partial design. For a long time, many agencies have abandoned or shelved design patent service due to their low cost performance. However, with the recent amendment, there will be a surge in design patents, which is worthwhile for the agencies to invest in and follow up.


Contributors:


Dong Wang

Email: [email protected]


Xiaotian Ma

Email: [email protected]


Yichen Yang

Email: [email protected]


Jingyu Zhang

Email: [email protected]