Following two and a half years since the fourth Amendments to the Patent Law came into effect in June 2021, the following regulations including:
- the amended Implementing Regulations of the Chinese Patent Law, and
- the amended Patent Examination Guidelines
have been updated and released at the end of 2023 and will come into effect on January 20, 2024.We have summarized the key points of the Amendments 2024 concerning design patents and their implications on practice and business. Further updates on the amendments related to invention and utility model patents will be provided in the upcoming newsletters.
Requirements for partial design patent
A partial design has been patentable since June 2021, and the Amendments 2024 further specify the requirement for partial design filings:
- A drawing of the entire product should be submitted.
- For the line drawings, the parts claimed for protection should be indicated by solid lines, the dotted lines claim no parts to be protected.
- For the rendering drawings/photos, the parts claimed no parts to be protected should be covered with semi-transparent contrast color.
- If the claimed parts contain a three-dimensional shape, the submitted views should include a three-dimensional view that clearly shows the part.
- If a dot dash line is used to indicate the dividing line between the part claimed for protection and other parts, it shall be stated in the brief description when necessary.
- The parts claimed for protection should be stated in the brief explanation, it's not applied to the line drawings since they already claim the parts to be protected by solid lines.
- The title of the partial design should be the specific parts to be protected, instead of the entire product.
- The usage of the partial design should be stated in the brief explanation when necessary.
- The designated drawings or photos that best illustrate the key points of the design should contain the partial design to be protected.
- Partial design should form a relatively independent area or constitute a relatively complete design unit on the product.
International design application
China joined Hague System since May of 2022, and China National Intellectual Property Administration (CNIPA) is the receiving Office of international design applications. The Amendments 2024 specify the details of the provisions about international design applications.
Absolute obviousness
Examiners will be empowered to initiate an obviousness examination at their discretion for design patents filed on or after the same day, which is a further requirement for granting design patents after the introduction of obvious novelty examination in a few years ago. Previously a design patent would be granted primarily based on formality examinations and obvious novelty examinations. This indicates a trend towards stricter criteria for granting design patents. The purpose of this change is to address the issue of bad faith patent filings, which include a significant number of design patents.
Deferred examination
A deferred examination has been an option for Chinese designers, and the deferral period can be chosen for a duration from 1 to 36 months. Before the Amendments 2024, the deferral period can only be selected from three choices of 12 months, 24 months, and 36 months. This option provides more flexibility for designers to extend the pendency of their design patents on a monthly base to align with their specific business requirement.
Priority
A design patent can claim priority to three types of patents, invention, utility model, and design. A domestic priority design will be considered as withdrawn upon being claimed, while the priority invention and utility model patents will not be affected. The priority period for any type of patents being claimed as priority for a design patent is 6 months
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.