The 1999 Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs has been in effect in China since May 5, 2022. On April 22, 2022, the China National Intellectual Property Administration (the 'CNIPA') published an Announcement on Interim Measures for Handling the Relevant Matters after Accession to the Hague Agreement (No. 481) and gave more details on how the CNIPA will handle international design applications. The following points are given on the basis of the Declaration made by China (No.6/2022), the Announcement, the Patent Examination Guidelines, as well as our experience in handling Chinese design applications.
Examination by the CNIPA
A registered international design application is considered to have met the formal requirements for filing a Chinese design application. The CNIPA might however make examination of obvious defects over the claimed designs, including among others,
- whether they conform to the definition of design,
- whether they are contrary to the public order or morals,
- whether they are obviously not new or creative,
- whether they are designs of trademarks,
- whether the drawings have definitely and sufficiently disclosed the designs,
- whether they conform to the unity requirement.
If the application is obviously defective, the examiner will send a Notification of Refusal to the International Bureau within 12 months of the international publication. When the reply involves amendment to the application documents such as the brief description, the later shall be in the initial language.
After a decision is made to grant protection to the international design application, the CNIPA will publish it in Chinese and the design patent right takes effect in China from the date of publication according to the draft amendments to the Implementing Regulations.
Drawings and brief description
Article 27(2) of the Patent Law provides that the drawings submitted by the applicant shall clearly show the claimed design. It seems that the CNIPA will not change its current requirements on the drawings. That implies, for a threedimensional product, at least three sides of the product shall be shown, which may be realized by filing, for example, one orthographical view and one perspective view at the least. As to GUI, at least one orthographical view showing the display panel containing the GUI shall be submitted.
An international design application designating China shall contain a brief description of the characteristic features of the design. Without such a brief description, the effective filing date for China will be postponed. According to Article 64 of the Patent Law, a brief description may be used to explain the claimed designs shown in the drawings. This means the brief description will to some extent define the protection scope of a design, its definiteness, and sufficiency of disclosure.
According to Article 31(2) of the Patent Law, an application for a design patent shall be limited to one design, two or more similar designs for the same product (1st situation), or two or more designs, which are incorporated in products belonging to the same class and sold or used in sets (2nd situation), may be included in one application.
In the 1st situation, one main design shall be indicated in the brief description, the other designs shall be similar to the main design and the total number of designs shall not exceed 10. In the 2nd situation, all products must belong to the same Locarno class and be customarily sold or used at the same time, and the designs incorporated in each product must possess the same concept of design.
The applicant may file a divisional application on his own initiative with the CNIPA within 2 months from the date of publication of the international design application. The applicant may also file a divisional application on the basis of an examiner's opinion.
If the applicant claimed priority but did not file a certified copy of the priority application with the International Bureau when filing the application, he shall submit to the CNIPA such a certified copy within 3 months from the date of publication of the international application. Meanwhile, the priority claim fee shall be paid to the CNIPA within 3 months from the date of publication of the international application.
If the applicant recorded in the certified copy of the priority application is different from that of the subsequent Chinese application, the applicant shall submit the supporting document to the CNIPA within 3 months from the date of publication of the international application.
Should one of the three requirements be not met, the application shall be deemed not to have claimed priority.
Disclosure without loss of novelty
According to Article 24(2), (3) of the Patent Law, the novelty of a design shall not be lost if, within 6 months prior to the date of application, the design was first exhibited at an international exhibition sponsored or recognized by the Chinese government, or it was first made public at a prescribed academic or technological meeting.
If the applicant claims the existence of any of these two circumstances, he shall declare it when filing the international design application and submit to the CNIPA within 2 months from the date of publication of the international application the supporting document together with an explanation. When either a declaration is not made or a supporting document is not submitted, Article 24(2), (3) of the Patent Law concerning the exception to the loss of novelty will not be applied.
Change of the ownership
When requesting a change of the applicant or the right holder of an international design application, in addition to the relevant procedures with the International Bureau, the eligible supporting document for that change shall be submitted to the CNIPA to put the change into effect in China. If the supporting document is in a foreign language, it shall be accompanied by a translation of the Chinese inscription. If no supporting document is submitted or the supporting document is not eligible, the change will not be effective in China.
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.