ARTICLE
9 February 2024

Practice Of Partial Design Patent Prosecution In China In Line With The Revised Rules For The Implementation Of The Patent Law And The Revised Guidelines For Patent Examination (Part 2)

Purplevine IP

Contributor

PurpleVine IP Group, based in Shenzhen, is a China-based and internationally-oriented IP service provider. Founded in 2018, Purplevine currently has 10 offices worldwide with more than 400 full-time employees. We provide full-chain, one-stop IP services that include global prosecution, IP consultancy, IP transactions, licensing, enforcement, and dispute resolution.
Building on our earlier discussion, where we shared insights on filing partial design applications and highlighted the changes in the revised Rules...
China Intellectual Property
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Building on our earlier discussion, where we shared insights on filing partial design applications and highlighted the changes in the revised Rules for the Implementation of the Patent Law ("the Rules") and the Guidelines for Patent Examination ("the Guidelines"), we aim to offer additional tips for successfully submitting Chinese partial design applications in this piece.

Ⅰ. Product in Sets and Partial Designs

According to the provisions of Section 9.2, Chapter 3, Part 1 of the amended Rules, the respective designs of product in sets should contribute to the overall design of the product in sets rather than partial designs.

That means it is not possible for a product in set to request protection of the overall design and the partial design at the same time. If an application for the product in set claims partial designs, an Office Action will be issued. When responding to the Office Action, attempts to amend the drawings from partial designs to the overall design, such as converting dashed lines to solid lines or removing semi-transparent overlays, may result in problems of the amendment exceeding the scope of the original application. Under such circumstances, we suggest:

  1. If an applicant wants to protect the whole design of the product in sets, it is advisable to file an application for the whole design of the product in set, presenting each component
  2. If an applicant wants to protect the partial design of a specific component of the products in sets, it is advisable to file a partial design application for the specific component separately.

Ⅱ. Graphical User Interface and Partial Design

The revised Guidelines (Part 1, Chapter 3, Section 4.5.2) provide that a partial design application is applicable when the essential feature of a product only relates to the graphical user interface (GUI). In such cases, the applicant can submit a partial design application with a product that applies or not applies the GUI. The brief description should clearly state that the design elements are exclusively related to the GUI or a specific portion of the GUI.

Under the current Guidelines, there are two main approaches to protect the partial design of a GUI:

  1. It is permissible to file a partial design application with a demonstration of the product that the GUI is applied to demonstrate the proportion and position of the GUI in the product. In this case, if it is desirable to claim a part of the GUI, the product name shall indicate the claimed part, such as "a search bar of the mobile payment GUI of smartphones." The brief description shall also specify the use of the claimed part.
  2. The applicant may file a partial design application for GUI applicable to any electronic device with a demonstration of the product the GUI is not applied. However, the product name shall include keywords like "electronic device". More specifically, when applying for a partial design patent for the GUI, the product name should indicate the claimed partial design, such as "a search bar of the mobile payment GUI of electronic devices". The brief description shall specify the use of the claimed part as well.

Ⅲ. A Single Application for Multiple Designs and Partial Designs

The criteria for filing a single design application with multiple designs are similar to those used before. It primarily focuses on whether the multiple designs can be categorized into a single design, or satisfy the requirements of similar designs.

According to the Guidelines, an application for a design patent shall be limited to one design. For multiple partial designs, how can we determine if they can be categorized into a single design?

Through holistic observation, if other designs and the basic design share identical or similar design features, and if they only differ in fine details of parts, features commonly found in the products of the same kind, repeated arrangement of design elements, position and/or proportion of the partial designs in the product, or mere differences in colors, then they are generally considered similar.

Minor differences generally refer to slight differences or variations in the same part of the product. When it comes to one part of the same product and another part of the same product, they are not considered a single design. For example, the handle of a floor cleaning machine and the same machine's brush head are considered separate designs and cannot be filed as a single application.

Additionally, an application including the design of the whole product and a small unclaimed part can be considered a single design. In other words, the design of the whole product and the design of a small part represented in dashed lines can be filed as a single application. In contrast, the design for the whole product and the design of a significant part of the product should be considered as two separate designs. For instance, the overall design of a robotic vacuum cleaner and the partial design of its rolling brush are generally regarded as different designs and, thus, are not eligible for a single application with multiple designs.

In exceptional cases, multiple partial designs of the same product may still be considered a single design. This requires that two or more partial designs are not connected but are functionally or design-wise related and create a specific visual effect. For example, the designs of temples of glasses or the four corners of mobile phones can be considered a single design (Examination Guidelines, Part 1, Chapter 3, Section 9).

Ⅳ. Divisional Applications and Partial Designs

When applying for a design patent, if the original application fails to satisfy the requirement of unity, an Office Action will be issued. At this point, the applicant may file a divisional application for the design that lacks unity and the application cannot go beyond the scope of the original application. For divisional applications of partial designs, we suggest the following:

  1. If the original application claims the whole product design, filing a divisional application claiming a part of the product design is not permissible. For example, if the original application claims the overall design of a motorcycle, the design of motorcycle components or specific parts cannot be filed as a divisional application.
  2. If the original application claims a partial design of a product, it is not permissible to file a divisional application claiming the design of the whole product or other partial designs (Examination Guidelines, Part 1, Chapter 3, Section 9.4.2).

Therefore, applicants should carefully consider and determine their prosecution strategy when preparing a design patent application to avoid being unable to seek protection for the whole or specific parts of their product through a divisional application in the future.

Ⅴ. Voluntary Amendments and Partial Designs

Applicants may propose voluntary amendments to the design patent application within two months from the date of filing. Such voluntary amendments shall satisfy the following criteria:

  1. Proposed within two months from the date of filing;
  2. Do not go beyond the scope indicated by the original drawings or photographs.

As to amendments submitted after the two-month window, if they are to rectify the deficiencies of the original application documents and there is a prospect of grant, the amendments will be accepted. However, the following amendments will not be acceptable:

  1. From a whole design to a partial design;
  2. From a partial design to a whole design; and
  3. From a partial design to another partial design of the product.

These amendments will change the scope of protection of the original application and will not be deemed as eliminating deficiencies in the original application. Hence, the examiner will issue a notification of not submitting voluntary amendments on the grounds of expiration of the two-month window.

Furthermore, when making amendments in response to deficiencies pointed out in an Office Action, the three types of amendments above, even if they do not exceed the scope of the original drawings or photographs, cannot be considered as addressing the deficiencies raised in the Office Action and thus will not be accepted.

Subsequent amendments to a design patent application from a whole design to a partial design, from a partial design to a whole design, and from a partial design to another partial design are strictly restricted. The best strategy for applicants is to thoroughly consider and determine the strategy when filing the application

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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