One Case a Day | China: Examination of Conflicts Between Design Patents and Prior Copyright - Invalidation Decision No. 566040 (2024)

Case Introduction

Yesterday, we shared the key points of examining conflicts between design patents and prior trademark rights. Today, we share a similar case where the prior right is copyright. Unlike prior trademarks, successfully registered copyrights are not automatically disclosed to the public, requiring an additional step to prove that the patentee knew or should have known about the prior right.

Case Information

• Application Number: 202230801898.8
• Invention Title: Packaging Box (Imperial Tribute Rice)
• Invalidation Decision Number: No. 566040
• Case Number: 6W125725
• Request Date: July 10, 2023
• Decision Date: January 2, 2024

Key Points of the Decision

To determine whether a design patent conflicts with prior copyright, it is necessary to assess whether the patentee, in a situation where they had access to or were likely to have access to a copyrighted work of another party, used a design identical or substantially similar to that work in the involved patent without the copyright owner's authorization. If the requester has not provided evidence that the patentee had access to the prior copyrighted work, nor evidence that the said work had been widely disseminated through publication, sale, or other means, making it known to the relevant public and thus proving the possibility of access, then it cannot be confirmed that the patentee of the involved patent had access to or was likely to have access to the prior copyright. If it cannot be proven that the patentee had access to or was likely to have access to a copyrighted work of another party before the filing date of the involved patent, it should be presumed that the patentee independently created their design, which does not constitute a conflict with the legitimate rights obtained by others before the filing date.

Key Points of the Case

The involved patent (filing date: November 30, 2022) is illustrated as follows:

Attachment 1 (Work Registration Certificate, registration number: Guo Zuo Deng Zi-2021-F-00190807, copyright registration date: August 19, 2021) image:

The requester argued:
The copyright of the artistic work "Two Dragons Playing with a Pearl" belongs to the requester, with the work registration number Guo Zuo Deng Zi-2021-F-00190807 (Attachment 1). This work was created on October 5, 2020, first published on December 5, 2020, and registered with the National Copyright Administration of the People's Republic of China on August 19, 2021.

The patentee of the involved patent applied for copyright registration for the same work at the Gansu Provincial Copyright Bureau on November 17, 2022 (before the filing date of the involved patent), with the registered work name "Imperial Tribute Rice Packaging (Dragon)" and registration number Gan Zuo Deng Zi-F-00031288 (Attachment 2). The requester contacted the Gansu Provincial Copyright Bureau on June 13, 2023, regarding the revocation of the infringing artistic work registration. The Gansu Provincial Copyright Bureau determined that the copyright registration Gan Zuo Deng Zi-F-00031288 was an infringing registration and forcibly revoked it on June 27, 2023. (Author's note: Why didn't the requester use this as evidence that the patentee knew about their prior copyright? No discussion related to this part was found in the collegial panel's review in the invalidation decision, which is a pity.)

The patentee abused their rights, not complying with the provisions of Article 20, Paragraph 1 of the Patent Law (Author's note: Since the filing date applies the old law, this invalidation ground does not stand); the involved patent infringes the requester's copyright and does not comply with the provisions of Article 23, Paragraph 3 of the Patent Law.

Invalidation Decision Points

The work registration certificate in Attachment 1... has credibility. In the absence of contrary evidence, the requester can prove their copyright in the work registered on the certificate with said registration certificate, and the requester is a qualified subject. According to the protection period for artistic works under the Copyright Law, this copyright is within its validity period. The registration date of Attachment 1 is earlier than the filing date of the involved patent, confirming that the requester's copyright in the work of Attachment 1 constitutes a "legitimate right obtained by others before the filing date" under the Patent Law.

Article 23, Paragraph 3 of the Patent Law stipulates: A design granted a patent right shall not conflict with the legitimate rights obtained by others prior to the filing date.

Section 7.2, Chapter 5, Part IV of the Patent Examination Guidelines stipulates that in a situation where there is access to or the possibility of access to a copyrighted work of another party, if the design patent uses a design identical or substantially similar to that work without the copyright owner's authorization, resulting in the implementation of the involved patent harming the relevant legitimate rights or interests of the prior copyright owner, it should be determined that the involved patent right conflicts with the prior copyright.

If there is no evidence proving that the patentee had access to or was likely to have access to a copyrighted work of another party before the filing date of the involved patent, it should be presumed that the patentee independently created their design, which does not constitute a conflict with the legitimate rights obtained by others before the filing date.

In this case, determining whether the involved patent constitutes a conflict of rights with copyright focuses on assessing whether the patentee had access to or was likely to have access to the said copyrighted work before the filing date of the involved patent. If there is no evidence proving that the copyrighted work was publicly disclosed before the filing date of the involved patent, the requester bears the burden of proof to demonstrate that the patentee had access to or was likely to have access to the copyrighted work.

Regarding the requester's claim that the involved patent conflicts with the work in Attachment 1, it is essential to confirm that the rights holder of the involved patent had access to or was likely to have access to the prior copyright. In this regard, the requester argued during the oral hearing that their products were sold at Beijing Daoxiangcun and widely disseminated, so the patentee had access to or was likely to have access to the copyrighted work.

The collegial panel held that a conflict of rights under Article 23, Paragraph 3 of the Patent Law refers to a situation where, in circumstances of access to or the possibility of access to a copyrighted work of another party, the design patent uses a design identical or substantially similar to that work without the copyright owner's authorization, resulting in the implementation of the involved patent harming the legitimate rights or interests of the prior copyright. In this case, the requester argued during the remote oral hearing that their copyrighted products were sold at Daoxiangcun and widely disseminated, so the patentee had access to or was likely to have access to the copyrighted work. However, the requester did not submit any relevant evidence to prove that their copyright was embodied on specific products sold at Daoxiangcun. Therefore, it cannot be proven that the patentee had access to the copyrighted work in Attachment 1. Moreover, the requester did not provide evidence that the copyrighted products at Daoxiangcun they claimed had been widely disseminated through sales or other means, making them known to the relevant public to prove the possibility of the patentee's access. Thus, it cannot be confirmed that the patentee of the involved patent had access to or was likely to have access to the prior copyright. Therefore, the requester should bear the adverse consequences of insufficient evidence for their claim. Based on the current evidence provided by the requester, it should be presumed that the involved patent was independently created.