Design patent applications or industry design applications in different countries have different requirements for the text description in the application. For example, the US design patent application needs to include a description of each view and a claim, the EU Community design can include a short description, and the Japanese and Korean design patent application can include an abstract. China’s design patents must also include a brief description. So, what does this brief description need to include and what role can it play?
 
1. Relevant legal regulations of brief description
 
1.1 A brief description is a necessary document
According to Article 27 of the Patent Law, “When a person intends to apply for a design patent, he shall submit a written request, drawings or pictures of the design, a brief description of the design, and other relevant documents.” Therefore, the design patent application must include a brief description.
 
1.2 What needs to be written in a brief description
According to Article 28 of the Rules for the Implementation of the Patent Law, “The brief description of a design shall indicate the title and use of the product incorporating the design and the essential feature of the design, and designate a drawing or photograph which best shows the essential feature of the design. Where the view of the product incorporating the design is omitted or where concurrent protection of colors is sought, this shall be indicated in the brief description. Where an application for patent for design is filed for two or more similar designs incorporated in the same product, one of these designs shall be indicated as the main design in the brief description.”
 
Section 4.3 of Chapter 3 of Part I of the Guidelines of Patent Examination also stipulates:
Furthermore, the following contents shall be indicated in the brief description:
(1) protection for colour is claimed or a view is omitted.
(2) where an application for a patent for design is filed relating to several similar designs of the same product, one of the designs shall be designated as the main design in the brief description.
(3) as regards plane product such as printed cloth, wallpaper, shall describe the unit pattern of the plane product which is connected in two sides or four sides and has no fixed limits if necessary.
(4) as regards a long and thin product, shall indicate the length is omitted in the drawings or photographs if necessary.
(5) where the product incorporating the design is made of transparent material or new material which creates special visual effect, it shall be indicated in the brief description if necessary.
(6) where the design product is a product in set, the names of the items in the product set shall be indicated if necessary.
 
The brief description shall contain no language of commercial advertisement, and shall not be used to show the function of the product.
 
1.3 The role of the brief description
According to Article 59, paragraph 2 of the Patent Law, “The scope of protection shall be confined to the design of the product as shown in the drawings or pictures, and the brief description may be used to explain the said design as shown in the drawings or pictures.”
 
2. Writing requirements and specific roles of each part of brief description
 
From the description in 1.2, we can know that the brief description should at least include: the title and use of the product incorporating the design and the essential feature of the design, and the picture number of the drawing or photograph which best shows the essential feature of the design. The writing requirements of each part and its role in the application are different, as follows:
 
2.1 The title of the product incorporating the design
The title of the product indicated in the brief description shall be in accordance with the title of the product in the request;
 
The title of the product can determine the type of product, and the same or similar product type is one of the basic elements for the establishment of design infringement, so the title of the product plays a decisive role in determining the scope of protection.
 
2.2 The use of the product incorporating the design
The use of the product which is helpful to ascertain the classification shall be indicated in the brief description. As regards product has multiple uses, the multiple uses shall be indicated in the brief description;
 
In an infringement lawsuit, the people's court shall determine whether the product types are the same or similar based on the use of the design product. The description of use of the product in the brief description can be used as a reference for determining the use of the product. In addition, some products are relatively new or uncommon, so the use of the product helps the examiner to classify the design product. Besides, if the product has multiple uses, it can also be stated here to help determine the similar type of product.
 
2.3 The essential features of the design
The essential features mean that the shape, pattern or their combination, or the combination of the colour with shape or pattern, or the position, which is different from prior design. The description of the essential features shall be compendious;
 
The essential features of the design are actually from the designer’s point of view, a description of a new design that is different from the prior design by selecting a single, multiple elements or a combination of elements. Its role will be explained in detail in Part 3 below.
 
2.4 Which drawing or photograph is designated to best show the essential features of the design
The designated drawing or photograph is used for the publication in the Patent Gazette.
 
3. The role of essential features of the design in patent invalidation and infringement litigation
 
3.1 The role of essential features of the design
3.1.1 The role of essential features of the design in the invalidation procedure
Section 6.1 of Chapter 5 of Part IV of the Guidelines of Patent Examination stipulates: “It should be noted that the design designated by the essential features of the design in the brief description does not necessarily have a notable influence on the overall visual effect, and it does not necessarily result in the significant difference between the patent concerned and the prior design. For example, as to the auto design, the brief description points out that the essential features of the design lie in the bottom side of the auto, however the design of the bottom side does not have a notable influence on the overall visual effect of the auto.”
 
That is to say, in the invalidation procedure of design patent, the essential features of the design in the brief description will not necessarily contribute to determining the difference between the design and the prior design.
 
3.1.2 The role of essential features of the design in infringement litigation
Article 59, paragraph 2 of the Patent Law stipulates: “The scope of protection shall be confined to the design of the product as shown in the drawings or pictures, and the brief description may be used to explain the said design as shown in the drawings or pictures.”
 
Article 11 of Interpretation by the Supreme People’s Court on Some Issues Concerning the Application of Laws to the Trial of Patent Infringement Disputes stipulates: “The People’s Court shall make a comprehensive judgment in view of the overall visual effects of the design based on the design feature(s) of the patented design and the accused infringing design when determining the identity or similarity of designs. The design features that are mainly determined by the technical function and the features that do not affect the overall visual effects such as product material, internal structure and so on shall not be considered.
 
The following factors usually have more impact on the overall visual effects of a design: (1) Parts that are easily observed in the ordinary use status of the product versus other parts of the product;
(2) Design features of the patented design distinguishing from the prior designs versus other design features.”
 
That is to say, in the infringement litigation, under the principle of comprehensive judgment in view of the overall visual effects, the features of the patented design distinguishing from the prior designs play a greater role in the overall visual effect. It should be noted here that the features distinguishing from the prior designs should be factual confirmation, not equal to the essential features of the design recorded in the brief description. However, without providing many prior design features for reference, the judge will often treat the essential features of the design as the distinguishing design features.
 
For the patentee, too much statement on the essential features of the design is less effective in maintaining the patent right in the invalidation procedure, but sometimes has the opposite effect on the scope of patent protection in the infringement litigation. Therefore, when drafting the essential features of the design of a design patent application, it is necessary to be more objective and beneficial to the patentee's patent protection. It can usually be drafted in a simple or general manner.
 
3.2 Related cases
A ceramic tile factory A has a design patent for ceramic tile as shown in Figure 1, and another ceramic tile factory B produces and sells the alleged infringing product shown in Figure 2. So, the ceramic tile factory A sued the ceramic tile factory B to the people's court, requesting the ceramic tile factory B to stop the infringement.

                        
         Figure 1 Design patent                         Figure 2 Alleged infringing product
 
The defendant, the ceramic tile factory B, argued that the design shapes and patterns of the ceramic tiles it produced and sold were completely inconsistent with the shape and pattern of the design patent owned by the plaintiff, the ceramic tile factory A, and did not constitute infringement.
 
After a court trial, the alleged infringing product and the plaintiff’s design patent both have triangular protrusions, and the non-protruding parts have dotted textures. The difference between the two is that the alleged infringing product is made up of the plaintiff’s design in a regular square arrangement.
 
The court ruled that, in accordance with the Article 59, paragraph 2 of the Patent Law, “the scope of protection shall be confined to the design of the product as shown in the drawings or pictures, and the brief description may be used to explain the said design as shown in the drawings or pictures.” According to the comparison in the court trial, the alleged infringing product and the plaintiff's design patent have obvious differences in the number and position of the triangular protrusions, and the two will not confuse ordinary consumers. The plaintiff claimed that its design patent is consecutive four-square without boundary, and when the tiles are actually laid, they can be assembled into shapes and patterns that are exactly the same as the alleged infringing product. However, the plaintiff’s design patent did not contain the above content in the essential features of the design of the brief description, and the plaintiff did not provide corresponding evidence to prove it, so it is not accepted. All claims of the plaintiff were rejected.
 
Comment: In the above case, although the plaintiff’s claim is reasonable, its claim was not stated in the essential features of the design of its design patent. Therefore, its claim was not supported by the court. Imagine that if the plaintiff has stated consecutive double-square and four-square in the essential features of the design of the design patent, then the judgment results of the above cases may be completely opposite. Therefore, for ceramic tiles, glass, cloth and other products, expressions of consecutive double-square and four-square in the essential features of the design have played a positive role in the protection of the design patents of these products.
 
Since the brief description may be used to explain the said design as shown in the drawings or pictures, it is necessary to pay attention to the writing of the brief description, which can affect the protection scope of the design to a certain extent.