Judgment of "Modification Exceeding Scope" of Design Patent in Patent Invalidation Procedure - A Brief Analysis of the Request for Invalidation of "Lamp" Design Patent

1、 Basic case

Application Number: 201430410590.6

Patent Name: Lamp (2)

Patentee: Shenzhou Transportation Engineering Group Co., Ltd

Invalid application requester: Changzhou Huafulai Lighting Co., Ltd

Invalidation Request Review Decision No. 45605

With regard to the design patent No. 201430410590.6 (hereinafter referred to as the patent involved), Changzhou Huafulai Lighting Co., Ltd. (hereinafter referred to as the claimant) filed a request for invalidation to the China National Intellectual Property Administration on March 18, 2020, on the grounds that the patent involved did not comply with the provisions of Article 33 and Paragraph 2 of Article 27 of the Patent Law.

Case focus: Has the applicant made any out of scope modifications to the design patent in question

Legal basis: Article 33 of the Patent Law

Key points of examination decision: The design patent at the time of authorization announcement exceeds the scope of the corresponding design represented in the original application documents, and the two do not belong to the same design. The patent in question does not comply with Article 33 of the Patent Law.

2、 Review decision reasoning

By comparing the original application documents of the involved patent on October 27, 2014 with the revised documents submitted on March 12, 2015, it was found that the shape design of the lamp holder located below the magnolia flower bud shaped lamp body and the conical platform design at the lower part of the central lamp post in the authorization announcement text of the involved patent were different from the shape design displayed at the corresponding position in the original application document view, or were obscured and invisible, and could not be directly and unambiguously obtained through other views after view correction, nor were the differences caused by different display angles of the product appearance design view.

According to the Guidelines for Patent Examination, modifications beyond the scope represented by the original images or photographs refer to designs that are different from the corresponding designs represented in the original application documents. As mentioned above, the corrected view submitted by the patentee has resulted in the appearance design of the authorization announcement text being different from that of the original application text. Therefore, the authorization announcement text of the patent in question exceeds the scope of the original image representation and does not comply with Article 33 of the Patent Law.

3、 Lawyer's analysis

Article 33 of the Patent Law (2008) stipulates that the applicant may modify their patent application documents, but the modification of invention and utility model patent application documents shall not exceed the scope recorded in the original specification and claims, and the modification of design patent application documents shall not exceed the scope represented by the original drawings or photographs.

The criterion for determining whether the modification of a design complies with Article 33 of the Patent Law (2008) is whether the design represented in the modified view is the same as the design represented in the original application document.

In this case, as shown in the figure below, the modified image submitted by the patent in question on March 12, 2015 has two differences from the original application document image: ① the graphic of the lamp holder is different; ② An inverted conical platform has been added to the lower part of the central lamp post.

As can be seen from the above, the lamp holder graphic and the inverted conical platform design added to the lower part of the heart lamp post in the text view of the patent authorization announcement are different from the shape design displayed at the corresponding position in the original application document view, and the shape and pattern of the modified view cannot be directly and unambiguously obtained from other views. Therefore, the modified appearance design is different from the appearance design in the original application document. Based on practical experience, if parts, shape elements, or pattern elements that were not displayed in the original image are added to the modified view, or the relative position relationship of various elements in the image is changed, and the above modifications cannot be directly and clearly determined based on design common sense in this field, it belongs to out of scope modifications. Only when there is a change in the number of views or when the product angles expressed in the views are different, and the design features of the appearance design reflected in the views have not changed, can it be considered as an out of scope modification.

In summary, the key to determining whether a design patent has been modified beyond its scope lies in comparing the modified design with the corresponding design represented in the original application documents to see if it belongs to a different design. If they belong to the same design, they comply with the provisions of Article 33 of the Patent Law; If it does not belong to the same design, it is considered as an out of scope modification. In order to protect their patent rights, applicants should be cautious when modifying patent application documents, ensuring that the modified design does not exceed the scope indicated in the original application documents.

Intern Chen Yue also contributed to this article