China: An "Over Shoes Over Boots" Judgment?

Comment on the Judgment of First GUI Design Patent Infringement Case in China

In May 2016, Beijing Qihoo technology Co. LTD. and Qizhi software (Beijing) Co. LTD. (hereinafter called "the plaintiff") sued Beijing Jiangminxinke Technology Co. Ltd. (hereinafter called "the Defendant") claiming patent infringement based on their Chinese design patent " computer with graphical user interface ", and requested Jiangminxinke to stop infringing and a damage of 5 million Yuan. The plaintiff's request was dismissed by the first instance judgment ruling that "the protection scope of the GUI patent should be limited by the physical feature of computer, and the accused behavior was to provide users with the software products, however, the "computer" and the software do not belong to the same or similar products classification, so that it does not infringe the patent right in accordance with direct or indirect infringement rules".

Chinese GUI design patent has its natural defect.

In March 2014, SIPO issued Order No.68 to revise the previous "Patent Examination Guidelines", deleted the last sentence in Paragraph 3, phase 7.2, chapter 3, Part I "The pattern of a product shall be permanent and visible, and not flickering or visible only under specific conditions." to meet the needs of technical development, meanwhile, a new paragraph was added: " as a design patent including the graphical user interface, an overall view of the whole product should be submitted. If the GUI is a dynamic pattern, at least a state of above-mentioned overall view is needed ".

As everyone knows, the core part of a GUI patent is the interface design itself which should be classified into the area of software. In view of the compatibility and portability characteristic of software, which means what the patentee really wants to protect has nothing to do with the hardware carrier. However, the protection scope must be limited by the carrier as an overall product due to the whole product protection principles for design patent in China, it will greatly limit the protection scope of design patent.

That is the point where the "natural defect" from.

Over shoes over boots: choice of the judge.

Obviously,it is thoughtless to take the new born GUI patent under the shackles of tangible carrier in the patent application and authorization process as followed the old rules and thoughts. So, the whole industry is looking forward to emancipating the GUI patent from the shackles by judicial decision, so it can really play a positive role in innovation protecting, and creativity encouragement, but we were all disappointed.

Perhaps from the view of judge and the principle of judicial discretion, it is rational to make a judgement within the existing legal framework. As stated in the written decision: although SIPO listed " the product appearance design with graphical user interface" in Order No.68, the specific content of the provisions is only adaptive adjustment to the existing design patent protection framework, rather than a set of rules different or independent from the existing system". And under the provisions of judicial interpretation" if the accused product is the same as or similar with the design patent, the people's court shall determine that the alleged infringing product falls into the protection scope of design patent in accordance with the provision of article 59.2 of the Patent Law, since the computer and software are classified into different product categories, it does not constitute infringement.

Since the judiciary is based on legislation, it seems to be invulnerable that the judicial authorities make a decision strictly according to law, but maintaining an irrational or even false rule system, no matter it is no alternative or just exercise the jurisdiction mechanically, as far as the results is concerned, it can only be "Over shoes over boots".

In fact, as early as in the draft of revised Patent Law (solicit draft) issued in April 1, 2015, it amended the article 2.4 of the previous patent law into: " Design means any new design of shape, the pattern, or their combination, or the combination of the color with shape or pattern, of a whole product or any part of a product, which creates an aesthetic feeling and is fit for industrial application", which originally as: "Design means any new design of shape, the pattern, or their combination, or the combination of the color with shape or pattern, of a product, which creates an aesthetic feeling and is fit for industrial application ".

The protection object of the design patent should not be confined to the whole product, and should be extended to any part of a product. It shows that the legislator has been aware of this problem, only because the amended law cannot be taken into effect immediately restrained by the legislative procedure.

With the analysis of current legislative trend, we do believe that the protection of partial design is inevitable.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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