In October of 2020, the new Chinese Patent Law was finally announced and published. The new law is confirmed to take effect from June 1, 2021

There are a number of changes concerning Design Patents in the new law, and one of the important change is the increase of patent term of industrial designs from 10 to 15 years. Presumably, this change is driven by “The Hague System for the International Registration for Industrial Designs”, which requires the member state to provide a patent term of at least 15 years for the registered industrial designs. Although China is not a member state under Hague Convention yet, however, China showed a strong interest in becoming a member in recent years, because this could substantively save the time and cost for obtaining an overseas industrial design. 

However, a tricky question is which are the Chinese design applications or Chinese design patents that are eligible for 15-year protection?  In other words, since the new law will not take effect until June 1 of 2021, does it mean only the design patents granted after June 1 of 2021 will be entitled to 15-year patent term?

To be honest, there is no confirmed answer to this question yet. But there are generally two speculations: 

(1)  The 15-year protection only applies to design patents granted after June 1, 2021.

(2)  The 15-year protection applies all design applications or design patents that are not terminated yet. 

If Assumption (2) is adopted by the CNIPA, then we can continue to proceed as usual without worrying about any change in practice. 

However, if Assumption (1) is adopted by the CNIPA, then the Applicants who want a 15-year design term should avoid the design application from being granted before June 1 of 2021. Based on such an assumption, we would suggest the Applicants who want a 15-year design term to take one or more approaches below during this transition period (from now to June 1, 2021), in order to delay the process of being granted:

   (i) File a request for deferred examination for at least one year at the time of filing

        the Chinese design application, to make sure the design application is pending by

       June 1, 2021.

   (ii) Delay the response time to any Office Action(s) by filing a two-month extension.

   (iii) Abandon the parent application and file a divisional design application therefrom.

   (iv)Pay the grant fees as late as possible, hopefully after June 1 of 2021. 

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.