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
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
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
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.
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