On February 5, 2022, China acceded to Hague System for the International Registration of Industrial Designs. The Hague provisions will become effective in China on May 5, 2022. China has been negotiating such accession for a few years, and it was partly anticipated by certain measures of harmonization introduced with the latest amendment to the patent law in 2019, for example, the extension of a design patent duration from 10 to 15 years.
The Hague System allows right holders to secure design protection simultaneously in multiple countries or regions through one international application, in one language with one set of fees and, unlike the Madrid Convention for trademarks, there is no requirement to file a national application first. Inventors in China will thus be able to use the International Design System to file and protect their designs overseas with one procedure which will help them save time and money. At the same time, foreign right holders will be able to cover China with one application filed in their language and English with one set of fees.
Under the Hague system, the international application filed with WIPO is examined only as to formalities and published 12 months from the filing date. Each country designated by the applicant has the right to perform substantive examination of the application. Given that China does not provide for substantive examination of design applications, the WIPO examination and publication will complete the examination formalities. China may still reject the application on other grounds and has six to twelve months to do that. Such rejections may center mostly on certain differences in the design formalities and drawing standards still existing between China and the US or Europe. In spite of recent reforms in China concerning design technical standards and drawings requirements, we may expect rejections by the China IPO (CNIPA) based on such grounds.
We will need to wait for May 2022 to see whether such accession will really have an impact on design filings in China. Will more foreigners try to use international filings or will they stick to national filings to reduce risk of rejection, due to the still many different provisions and practices on scope of protection and drawings? Will Chinese designers use international applications to expand their design reach to other countries, and risk their creativity being challenged by legal systems providing substantial examination of their applications?
The next year will be an interesting test ground for all these challenges.
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.
