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Important Amendments Concerning Design Patents in the Patent Examination Guidelines (PEG)

1. Deleting the method of “judgment of key features” in the standard of determination for the identicalness and similarity of designs
In order to further clarify its meaning, the concept of “key features” has been replaced by the phrase, “parts that can be easily seen when being used,” in the new PEG. The inclusion of the method of “judgment of key features” in the old PEG aimed to simplify the process to judge the identicalness and similarity of a design. However, after four years of practical examination experience, the lack of a unified standard in the “judgment of key features” has caused certain problems. The courts and the patent reexamination board also have different understandings of the definition of “key features.” As a result, the same design may receive different examination conclusions.

In view of this, the concept of “key features” has been deleted from the new PEG to avoid conflicting interpretations. At the same time, examples of the former ‘judgment of key features’ are being presented in the principle of determination in the new PEG, as a notable influence over the determination of the overall visual effect of the design of a product. This is to enhance the unification for the standard of determination of the identicalness and similarity of a design.

2. Adding unpatentable subject matter for design patent right
Since ‘patterns on a product after an electric current is established,’ e.g. patterns on the face of an electronic watch, patterns on the display panel of a mobile phone, and software interfaces, are deemed not comply with Rule 2.3 of the Implementing Regulations of the Patent Law, the new PEG clearly indicates that they are subject matter for which design patent protection shall not be granted. Therefore, applicants should avoid filing these kinds of design patents.

3. Confirming the message disclosed in prior-art designs
When applying the standard of determination for the identicalness and similarity of designs, it is usually hard to find corresponding drawings or photographs of prior-art designs for every single directional view of a design patent. Realizing the lack of clarification in the standard of determination for the identicalness and similarity of designs in the old PEG, the new PEG regulates that for any drawings or photographs of a prior-art design that do not reflect each directional view, the message disclosed in the prior-art design, shall be confirmed in accordance with the cognitive ability of general consumers. If the design of the other parts or variations of a product can be inferred from the content disclosed in the drawings or photographs of its corresponding prior-art design using the cognitive ability of general consumers, then the design of the other parts or variations of the said product shall be deemed disclosed. For example, under the condition of axial symmetry, surface symmetry, or center symmetry, even if the drawings or the photographs only disclosed the design of one symmetrical surface of a product, the rest of the symmetrical surfaces shall be deemed as disclosed.