Top 10 Patent Reexamination & Invalidation Cases in 2022

Request for Invalidation of the Design Patent Titled “Automobile”

China National Intellectual Property Administration (CNIPA) announced the top 10 patent reexamination & invalidation cases in 2022. Among them, the case concerning the request for invalidation of the design patent titled “automobile” was represented by the attorneys from Chang Tsi & Partners, who were Michael Wu, Nancy Qu, and Vickie Wang. This case serves as a guiding example for innovation entities in gaining an in-depth understanding and application of the IP-related laws and regulations.

Part 01

Top 10 Patent Reexamination & Invalidation Cases in 2022

As a procedure preceded by granting approval and followed by rights protection, patent reexamination and announcement of invalidation is an important link that connects the granting and protection of rights. It provides imperative support for the construction of a greater IP protection system in China and thereby attracts much attention from society. In order to better interpret the application of law through typical cases and help strengthen the legal safeguards for intellectual property rights, CNIPA selects the top ten cases of typical significance and announces them to the public every year.

On April 25th, the top ten patent reexamination & invalidation cases in 2022 were officially released at CNIPA’s Open Day event, which included the case represented by Chang Tsi concerning the request for invalidation of the design patent titled “automobile”. Regarding this case, the organizer indicated: "this case elaborates on the principles and methods for determining conflicts between design patents and the prior trademark rights. According to the decision, the determination of whether trademarks are identical or similar should be based on the general attention of the relevant public, and whether the patent involved acts as a trademark identifier should be examined." This case gives guidance for innovation entities on gaining an in-depth understanding and application of the IP-related laws and regulations.

Part.02

About the Case

Significance

This case plays a guiding and exemplary role in examining whether design patent rights conflict with the prior trademark rights. The examination decision elaborates on the principles and methods for determining conflicts between design patents and the prior trademark rights, indicating that the determination of whether trademarks are similar should be based on the general attention of the relevant public, and whether the patent involved acts as a trademark identifier should be examined. When the patent involved is compared with the prior trademark, it is necessary to consider the actual use status of the prior trademark as well as the popularity and influence brought by its extensive use.

In addition to the conflict with the prior trademark rights, Michael Wu, one of the attorneys representing this case, believed that the "visually separable" and "functionally separable" issues in the request for invalidation of the design patent were also the focus of this case and should be further researched.

This case is instructive for innovation entities on an in-depth understanding and application of the IP-related laws and regulations. It not only guides enterprises to invest more efforts in protecting intellectual property rights, especially in perfecting the comprehensive layout of different types of intellectual property rights, but also reminds them to respect the prior legitimate rights of others and make reasonable avoidance in accordance with the law when applying for and exercising intellectual property rights. Only by doing so can they maintain the legitimacy and effectiveness of their own rights and achieve success with ease in the increasingly intense market competition.