China implements a preliminary examination system for design patent applications. Due to its relatively lenient criteria, some design patents that fail to meet the granting requirements may still be approved. Invalidation proceedings serve as a critical legal remedy, playing an essential role in correcting improper grants, promoting fair market competition, and ensuring patent quality. Moreover, these proceedings offer an effective defense mechanism for accused infringers.

Here’s what you should know about the invalidation proceedings of design patents.

1. Who is entitled to file a request for the invalidation of a patent?

Under China's Patent Law, any entity or individual—including interested parties (e.g., accused infringers), competitors of the patent holder, or third parties with no direct interest—may file a request to invalidate a design patent. Additionally, the patent holder themselves may also request invalidation of their own design patent.

2. Subject Matter of Invalidation Requests

The subject of an Invalidation request must be a design patent that has been published and granted. This includes patents that have been terminated or abandoned, except for those abandoned as of the application date.

3. Grounds for Invalidation Requests

The basis for filing an invalidation request against a design patent lies in non-compliance with specific provisions of the Patent Law and its Implementing Regulations (hereinafter referred to as the "Regulations"). These grounds involve the following legal provisions.

• •Article 2, Paragraph 4 of the Patent Law: Defines the scope of subject matter eligible for design patent protection.
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• •Article 5 of the Patent Law: Prohibits design patents that contravene laws, social morality, or public interest.
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• •Article 9 of the Patent Law: Permits only one patent right for a single design, prohibiting duplicate grants.
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• •Article 23, Paragraph 1 of the Patent Law: Requires design patents to possess novelty.
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• •Article 23, Paragraph 2 of the Patent Law: Mandates that a design patent exhibit significant differences compared to existing designs or combinations of existing design features.
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• •Article 23, Paragraph 3: A design for which a patent is granted shall not conflict with the legitimate rights obtained by others prior to the application date.
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• •Article 25, Item (6): No patent right shall be granted for a design primarily serving as an identification mark, consisting of patterns, colors, or a combination thereof, on printed matter.
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• •Article 27, Paragraph 2: The drawings or photographs submitted by the applicant shall clearly display the design of the product for which patent protection is sought.
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• •Article 33: Amendments to the application documents for a design patent shall not exceed the scope represented by the original drawings or photographs.
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• •Rule 11: An application for a design patent shall adhere to the principle of good faith.
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• •Rule 49: A divisional application for a design patent shall not exceed the scope recorded in the original application.

In practice, approximately 90% of design patent invalidation cases are filed based on Article 23, Paragraph 1 or 2 (lacking novelty or lacking significant distinctiveness).

4. Requirements for the Request for Invalidation of a Design Patent

In the request for invalidation of a design patent, the scope of the request shall be clearly specified, the grounds for invalidation shall be stated, and the evidence on which the request is based shall be provided.

The evidence typically consists of publicly available materials related to the product’s appearance disclosed before the application date (or priority date), such as patent documents, magazines, books, journal articles, technical manuals, newspapers, product catalogs, promotional brochures, or audiovisual materials. Additionally, the requester may provide evidence from webpages displaying the product’s appearance or evidence of the product’s public sale.

5. FAQs in the Invalidation Proceedings for Design Patents

5.1 Can Amendments Be Made to a Design Patent?

According to the Patent Examination Guidelines, during the invalidation proceedings, the patentee of a design patent is not permitted to amend the patent documents.

5.2 Can additional grounds for invalidation be added?

Within one month from the date of filing an invalidation request for a design patent, the requester may add additional grounds for invalidation. The added grounds must be specifically explained within this period; otherwise, the collegial panel will not consider them. Grounds for invalidation added after one month from the filing date are generally not considered by the collegial panel, except in the following circumstances: when the grounds for invalidation are amended to clearly correspond to the submitted evidence.

5.3 Duration of the Invalidation Examination for Design Patents

From the filing of the invalidation request for a design patent, the invalidation examination is generally completed within 4 to 6 months.

5.4 Can an invalidation request be withdrawn?

The requester may withdraw their invalidation request for a design patent before the collegial panel makes a decision on the invalidation request. If the invalidation request is withdrawn, the invalidation proceedings will be terminated, except in cases where the collegial panel determines that, based on the examination already conducted, a decision can be made to declare the patent right invalid or partially invalid.

5.5 Can I check if a design patent has been subject to an invalidation request?

Currently, you can check whether an invalidation request has been filed for a design patent in the China Patent Examination Information Query System of the CNIPA (website: https://cpquery.cponline.cnipa.gov.cn/chinesepatent/index).

5.6 Proportion of Design Patent Invalidation Outcomes: Fully Invalidated, Partially Upheld, or Fully Upheld

According to the annual report of the CNIPA, among the design patent invalidation cases concluded in 2022, 53.8% resulted in the patent being fully invalidated, 1.4% resulted in the patent being partially upheld, and 44.8% resulted in the patent being fully upheld.

5.7 Is There a Remedy Procedure After a Decision on the Invalidation of a Design Patent Is Issued?

If dissatisfied with the invalidation decision, an appeal may be filed with the Beijing Intellectual Property Court.

The above is a brief introduction to the invalidation proceedings for Chinese design patents, hoping it is helpful to you.