Foreign applicants are very interested in how to claim priority when they want to file a Chinese design application. We will introduce some relevant issues about foreign priority.
In paragraph 1 of Article 29 of China Patent Law, "Where, within six months from the date on which any applicant first filed in a foreign country an application for a patent for design, he or it files in China an application for a patent for the same subject matter, he or it may, in accordance with any agreement concluded between the said foreign country and China, or in accordance with any international treaty to which both country are party, or on the basis of the principle of mutual recognition of the right of priority, enjoy a right of priority."
As depicted above, there are three aspects should be known as follow.
1. Requirements of prior foreign application
In part E of Article 4 of Paris Convention, "where an industrial design is filed in a country by virtue of a right of priority based on the filing of a utility model, the period of priority shall be the same as that fixed for industrial designs."
According to our practical experience, when filing Design patent application in China, Utility Model or Design can serve as the prior application of the priority. But several types of application such as US provisional application cannot be the basis of claiming design application's priority in China.
2. Cognizance of same subject matter for priority
The conditions satisfying requirements of designs of same subject matter are (1) both of the designs are for the same product; and (2) the claimed design in the subsequent application in China is clearly shown in the prior application. The second point described above is more important. Whether the claimed design in the subsequent application was claimed in the prior application or not, all the designs shown in the prior application should be considered.
For example, in figure below, the design shown in the left is a partial design. The claimed design is a handle of cabinet and the cabinet is depicted in dotted line. Both the handle and the cabinet shown in the right can claim the priority to the prior application shown in the left.
Additionally, for a design application containing several products of independent use value, if the designs of one or more products therein have respectively the same subject matter as the designs in one or more first foreign applications, the design patent may enjoy one priority or multiple priority.
3. How to do when the priority is invalid
When the first foreign application cannot serve as the priority of the subsequent Chinese application, we should consider the publication state of the prior application to determine to file the Chinese design patent application or not. If the prior application had been published or issued before the subsequent application was filed, the prior application would become prior design that examiner would consider in determining the Chinese design application should be granted or not. In this instance, it is very important to analyze the priority in advance. You should file the subsequent application in China before the prior application was published as soon as possible.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.