China’s Design Patent Scourge Has Snared Apple: Nobody Panic

Big media today has been covering Apple’s design patent dispute with “a small Chinese competitor” and I woke up this morning to emails from financial analysts and reporters clamoring to talk about this news.

But first, everyone calm down and let me explain.

I do not know anything specific about Apple’s case. My law firm does not represent Apple on its IP matters, nor do we represent the Chinese company on this patent claim. I have not looked at a single pleading in this case, nor have I discussed it with the international IP attorneys in my firm who likely know more about this case than I do. This post is based on what our lawyers have seen with China design patents, which is a whole lot.

In the last six months or so, we have gone from dealing with maybe one China design patent matter a year to at least one a month. We think this massive acceleration in design patent matters is because word has gotten out among Chinese companies regarding the effectiveness of engaging foreign companies in design patent disputes.

1. What Exactly is a China Design Patent?

China’s design patent laws define a design as a shape, pattern, or combination thereof or the combination of a color with a shape and pattern, with an aesthetic appeal and for industrial application. If you think this definition is vague, you would be right. On top of this, China’s patent office does not “review” design patents before granting them. Or, as I love to tell clients, “I could probably secure a China design patent on the socks I’m wearing.” I am being intentionally dramatic, but I honestly believe my chances of securing such a design patent are good.

The other thing you should know about Chinese design patents are that the patent grants its holder exclusive use of the aesthetic features of a product, not its functioning portion. In other words, the patent is on how the product looks; its external appearance. Not kidding, but it is quite possible the small Chinese company with the mobile phone design patent could use its design patent against any cell phone company with a product that looks like an iPhone.

But let’s step back and look at what it really means to have a Chinese design patent, and I will do that by explaining (in  compilation form) the design patent cases our China attorneys have recently been handling.

These cases typically start with a phone call from a Western company telling us some company (usually a company it already knows because it is its manufacturer or a competitor) just contacted the Western company (or the Chinese company that makes the Western company’s product) and said the Western company’s product violates the Chinese company’s China design patent. The Chinese company then threatens to sue the Western company for patent infringement damages and to block any of the Western company’s “infringing” product from leaving China. Needless to say, the companies that call us on these matters are very concerned.

Though I am not going to claim these are pleasant situations or inexpensive for our clients, I will claim they are not as bad as they initially appear. China issues around ten times more design patents than the United States patent office, which reinforces my contention that I could get a China design patent for my socks. There is no substantive examination of a design patent application in China. All you really need do to get a China design patent is to complete your design patent application properly. So if I complete the design patent application on my socks, and attach a proper and appropriate drawing of them, along with a proper power of attorney and I make the right claims regarding my having designed my socks and regarding their being a new design, I almost certainly will get my design patent.

BUT, my sock design patent will be incredibly weak. And for this reason, China design patent actions are not as scary as they first appear and why I am calling for nobody to panic on Apple’s behalf either.

In the design patent cases my law firm has handled, nobody has yet actually had customs block their product from leaving China. The reason is because China customs generally requires a party seeking such a block to post a substantial bond. That substantial bond then becomes available to the party whose product has been blocked by customs. Again though, you want to avoid these cases if at all possible because even if you end up prevailing, you will need to incur considerable time, trouble and money to get there.

The difference between the cases we have handled and the Apple one is that in our cases the Chinese companies threaten to get an order blocking our client from having their product made in China, but they never do. They never do because they know the cost of doing so is high and the likelihood of their getting such an order and having that order stick is low. I once read that something like 85 percent of China design patents get invalidated when challenged. These Chinese companies fear that if we were to challenge their design patents we would prevail, so they are hesitant to spend money only to lose in the end. The Chinese company’s power comes from the design patent threat, not from reality.

In the Apple case, the Chinese company has brought a lawsuit and by doing so it has increased its threat value. Did the Chinese company do this because it has a valid patent? Or is it because it sees Apple as having such deep pockets it has decided to go strong in the belief that doing so will get Apple to pay big money in settlement to end the issue? I don’t have the answers.

But based entirely on our own history with China design patents, I am guessing Apple will prevail in the end.

2. The Best Way to Prevent China Design Patent Hijacking

Register your design patent first, before anyone else.

June 17, 2016 Update: CNBC has come out with an article, entitled, Beijing’s Apple ban isn’t likely to stick, expert says. I am the “expert” who does not think the ban will stick.

March 27, 2017 Update: Apple wins China patent battle over iPhone 6 design. I told you not to sweat it.