The Patentee KONINKLIJKE PHILIPS N.V. is a world-renowned company and has been a world leader in the field of consumer health and home care. Since the launch of the first Philips bulb more than 120 years ago, innovation and people-orientation have been at the core of the company’s motivation. This innovation has undoubtedly attracted consumers enormously, and innovative products have infiltrated people’s daily lives.
The case-related patent is a design patent No. 201430552761.9 (“the Patent”), which was filed on December 25, 2014, with a priority date July 4, 2014. The title of the product of design patent is “grooming apparatus”, specifically a body hair trimmer. The patented product belongs to daily necessities, and has a relatively large market space. As soon as the patented product was launched into the market, there were immediately a large number of imitations, which had a serious impact on the Patentee’s market and its brand. In the Patentee’s process of enforcing its patent right, it was constantly faced with the challenge of patent invalidation. Under the circumstance that the Petitioner requesting for patent invalidation could not find a close prior design document, it sought evidence from the published documents of invention patent.
The design essentials of the Patent are embodied in the shape, pattern or the combination of shape and pattern of the product. The drawings of the authorization announcement are as follows:
Contents of Decision on Invalidation Examination
2.1 Determination of evidence
The Petitioner submitted two patent documents as evidence of prior art, wherein Exhibit 1 is the publication No. CN102744736A of a Chinese invention patent application, which was published on October 24, 2012; and Exhibit 2 is the announcement text No. CN3534957D of a Chinese design patent, which was published on June 7, 2006.
The Petitioner alleges that Figures 1, 4 and 5 of Exhibit 1, as a comparative design, differ from the Patent only in that the bottom of the handle of the Patent is smooth and non-porous; however, the comparative design shown in Exhibit 2 discloses that the bottom of the handle is smooth and non-porous. Therefore, the Patent does not comply with the provisions of Article 23.2 of the Patent Law compared with the combination of Exhibits 1 and 2.
The Decision on Invalidation Examination first affirms that the publication date of the Chinese invention patent document as a prior design is prior to the filing date of the Patent, and the designs shown in the accompanying drawings constitute the prior design of the Patent. However, Figures 1, 4 and Figure 5 of Exhibit 1 belong to different embodiments, and certain parts shown in the two do not correspond to each other. The designs shown in Figures 1, 4 and Figure 5 do not constitute the same comparative design, and therefore, consideration shall be given to the designs shown in Figures 1, 4 and Figure 5 separately.
2.2 Regarding Article 23.2 of the Patent Law
With respect to the comparison between Exhibit 1 and the Patent, the main comments are as follows:
2.2.1 Figures 1 and 4 of Exhibit 1 constitute a comparative design.
Figure 1 is a schematic structural diagram, showing only the outermost contour lines of the side part of the product appearance, and Figure 4 mainly shows the profile of a bottom shell 2 portion of the side part in Figure 1, without disclosing the overall shape of the handle part. Comparing them with the Patent, except that they both consist of a handle part and a shaving part, the shapes of the handle part and the shaving part shown in Figure 1 and Figure 4 of Exhibit 1 are different from those of the Patent, failing to disclose a design of the Patent in which the four sides, i.e., front, rear, left and right sides, of the periphery of the handle part are arc-shaped shell surfaces, and the front and rear shell surfaces are designed to be a corner-cut transition with the left and right shell surfaces, respectively, as well as a U-shaped arrangement of the button design in the middle of the front shell surface. In addition, parts of the shapes of the shaving part and the handle shell disclosed in Exhibit 1 are obviously different from the corresponding parts of the Patent (see the following comparison diagrams from relevant perspectives).
Several views of the Patent
Figures 1 and 4 of Exhibit 1
2.2.2 Figure. 5 of Exhibit 1 constitutes another comparative design
Figure 5 mainly shows a design of the perspective view of the upper half of the product appearance, the shape of the lower half of the handle part is not disclosed, and other portions of the upper half of the product are blocked in this view. Comparing it with the Patent, except that they both consist of a handle part and a shaving part, the shapes of the handle part and the shaving part shown in Figure 5 of Exhibit 1 are different from those of the Patent, failing to disclose a design of the Patent in which the four sides, i.e., front, rear, left and right sides, of the periphery of the handle part are arc-shaped shell surfaces, and the front and rear shell surfaces are designed to be a corner-cut transition with the left and right shell surfaces, respectively, as well as a U-shaped arrangement of the button design in the middle of the front shell surface. In addition, parts of the shapes of the shaving part and the handle shell disclosed in Exhibit 1 are obviously different from the corresponding parts of the Patent (see the following comparison diagrams from relevant perspectives).
Perspective view of the Patent
Figure 5 of Exhibit 1
2.2.3 The Patent possesses obvious differences compared with Exhibit 1
Exhibit 1 does not disclose the overall shape of the product, the undisclosed part is regarded as a difference from the Patent, and the published part is also different from the Patent.
2.2.4 The Patent possesses obvious differences compared with the combination of Exhibits 1 and 2
In the combination of Exhibits 1 and 2, the Petitioner only requested replacing the design of charging hole in Exhibit 1 with the design of non-charging hole at the bottom of the handle of Exhibit 2. In the event that there are many differences between the handle part and the shaving part of the Patent and those of Exhibit 1, even if Exhibit 2 is combined, the Patent is obviously different from the combination of the two Exhibits.
Therefore, the Patent is in compliance with the provisions of Article 23.2 of the Patent Law with regard to the combination of Exhibits 1 and 2.
There are mainly two focused issues of dispute in this case: First, how to determine an invention patent as evidence of prior design? Second, how to determine the combination of different comparative designs in the invalidation of a design patent?
Paragraph 2 of Article 23 of the Patent Law provides that any design for which patent right may be granted shall significantly differ from prior design or combination of prior design features. With regard to the prior design, the Guidelines for Patent Examination provides that it includes designs that are made known to the public by publishing, public use or other means in China or abroad before the date of filing.
It can be seen that the design shown in the accompanying drawings of a patent application document for invention or utility model may constitute the prior design. However, there are often multiple embodiments in the patent application for invention or utility model, and it is necessary to judge whether the design shown in the accompanying drawings belongs to the same design.
The patent application document for invention or utility model tends to show more about an internal structure of a product, while designs protect an external design rather than the internal structure. In particular, according to the Patent Law before the Fourth Amendment, a design patent protects the overall design of a product rather than a part thereof. Then, in the case that the accompanying drawings do not clearly disclose the overall design of the product, the patent application document for invention or utility model as a comparative design is not comparable with the case-related design patent.
However, in the patent application document for invention or utility model, if multiple drawings are combined to disclose the overall design of the product, it is necessary to determine whether the multiple drawings belong to the same embodiment, if they do not belong to the same embodiment, it is necessary to determine whether there is correspondence between product appearances of different embodiments, if there is no correspondence, then the multiple drawings cannot be directly combined as a comparative design.
Embodiment 1 of Exhibit 1 (i.e. embodiment of Figures 1 to 4) discloses a “single-sided double-blade hair trimming device”, with a blade head 9 comprising two blade assemblies, namely a thick blade assembly 91 and a thin blade assembly 92, which are disposed side by side and in the same direction, and are respectively driven by a double eccentric shaft 6 via a thick blade rocker arm 8 and a thin blade rocker arm 7 (see Figures 1 to 4, paragraphs  to  of the specification). Embodiment 2 discloses a “double-sided double-blade trimming device”, with a blade head 10 comprising only a set of blade assemblies consisting of a fixed blade 30 and a movable blade 40 (see Figures 5 to 7, paragraphs  to  of the specification). The single set of blade assemblies disclosed in Embodiment 2 cannot be driven by the double rocker structure disclosed in Embodiment 1 to form a product having a hair trimming function. In fact, as shown in Figures 1, 4, and Figure 5, the product design of the two embodiments cannot be the same. For example, the side lines of the handle part can be compared. As shown in Figure 1, it is more likely that the left and right sides of the handle part can be symmetrical. Assuming it is indeed symmetrical, the side design shown in Figure 5 obviously does not correspond to the side design shown in Figure 4. In addition, the neck lines of the handle part can be compared. The neck of the handle part in Figure 4 is relatively short curved while the neck in Figure 5 is relatively long curved, so that the two do not correspond in this part. The non-correspondences are in line with the actual situation that the two belong to different embodiments. It can thus be seen that the designs shown in Figures 1, 4 and Figure 5 do not constitute the same comparative design.
Because the two embodiments have different internal structures and different working principles, they do not correspond to each other in appearance, so as a contrastive design, the two embodiments cannot be combined.
This case makes a useful discussion on using the accompanying drawings of an invention patent application document as evidence of a comparative design for evaluating the validity of a design patent. First, it affirms that the invention patent application document can be used as evidence of the prior design. Second, it makes a detailed discussion on whether the accompanying drawings of different embodiments can constitute a comparative design. In this regard, the Collegial Panel supported the Patentee’s observations. Although not generalizable, it is necessary to consider whether the product appearance in different embodiments has a correspondence. If there is no correspondence, it should be analyzed as two independent comparative designs. If there is a correspondence, it is necessary to consider whether the accompanying drawings of the different embodiments show a complete design of the product.
The reasons for the decision in this case fully affirmed the patentability of the Patent, and at the same time left enough space for the Patentee’s enforcement of its right.