Lung Tin Intellectual Property Agent Ltd
An industrial design may be protected by a design patent under the Chinese Patent Law. According to Article 2.1 of the law, ‘invention-creations’ are inventions, utility models and designs. At present, China is not a party to the Hague System, but is hoping to join soon after the fourth revision of the Patent Law which is presently under way.
Copyright, trademark and anti-unfair competition law provide other ways to protect a design idea:
- copyright mainly protects an original work in the artistic sense;
- trademarks generally focus on a distinct symbol or phrase; and
- anti-unfair competition law may play a complementary role to prohibit misleading and confusing behaviours about specific designs or trade dresses with a certain degree of influence.
The Patent Law provides no protection for unregistered designs, unless they reach the threshold of trade dress protection under the Anti-unfair Competition Law. Copyright may provide protection regardless of whether the original work is registered or unregistered, but the remedies for an unregistered design are limited. The Anti-unfair Competition Law may be applicable only for limited and additional protection of certain propriety rights regarding designs with a certain degree of influence in production, as well as for operation activities (eg, to prohibit use, without authorisation, of the same or similar identification names, packaging and decoration, among other things, peculiar to well-known goods).
Applicant for registered design
An industrial design should be registered under a design patent for protection. The applicant for a design application can be an individual and/or an entity.
For a service creation, the right to apply for a design patent belongs to the entity which the creator serves. For a non-service invention, the right to apply for a patent belongs to the creator himself or herself. If there is a contract in which the right to apply for and own a patent is provided, such provisions will apply.
Subject matter to be protected
There are several legal provisions provided in the Patent Law regarding the protectable subject matter for design patents.
Article 5.1 of the law provides that a patent right will not be granted for any invention-creation that is contrary to law or social morality or detrimental to public interest.
Article 25.1(6) provides that patent rights will not be granted for designs of two-dimensional printing goods, made of the pattern, colour or a combination of the two, which serve mainly as indicators.
Article 2.4 defines a ‘design’ as any new design of the shape, pattern or combination, or the combination of the colour with the shape or pattern, of a product, which creates an aesthetic feeling and is fit for industrial application.
Section 7.4(3)(1) of the Guidelines for Patent Examination lists the following situations as ineligible for design patent protection:
- any fixed building, bridge or similar which depends on specific geographic conditions and cannot be rebuilt elsewhere (eg, a villa built by a particular lake or hill);
- any product which has no fixed shape, pattern or colour because it contains a substance which has no fixed shape (eg, gas, liquid or powder);
- any component part of the product which cannot be partitioned or sold and used independently (eg, the heel of a pair of socks or the peak of a hat);
- in the case of any product consisting of several component parts which have a different shape or pattern, if each component part itself cannot be sold and used independently, such component part is not the subject matter under protection of design patent (eg, a jigsaw consisting of plug-in pieces of varied shapes is a patentable subject matter only when one application relating to all the pieces is filed);
- any product which cannot be perceived by the visual sense or determined with the naked eye, and the shape, pattern or colour of which must be distinguished by means of specific instruments (eg, a product whose pattern is visible only under an ultraviolet lamp);
- any design for which protection sought that is not the design of the state of the normal product (eg, the design of the state of an animal made with a handkerchief or balloon);
- any design of which the main portion is the original shape, pattern or colour of the natural object – such a design normally includes two situations: the natural object itself and the imitated design of the natural object;
- any work which belongs wholly to the field of fine arts, penmanship or photography;
- any design which is constituted only by geometric shapes or patterns of common sight in the field of the relevant product; and
- the pronunciations or meanings of words and numerals.
In China, a six-month grace period before the filing date (or the priority date where priority is claimed) may be applicable for a design patent application, when a design has been:
- exhibited in a Chinese government-organised or recognised international exhibition;
- made public at a prescribed academic or technological meeting organised or held by competent authorities under the Chinese State Council or national academic organisations; or
- disclosed by another person without the consent of the applicant.
Further, to qualify as a government-organised or recognised international exhibition or a prescribed academic or technological meeting and enjoy the six-month grace period, a statement from the relevant government departments, along with a government seal, is needed for claiming the grace period.
In order to obtain a filing date for a design application, a request, drawings or photographs of the design and a brief explanation of the design must be filed. Both paper and electronic filing are available.
The applicant may amend the application documents voluntarily within two months of the date of filing or according to an office action (if any). From 1 November 2019 it is possible to delay publication for a design application by filing a request for deferment examination on the filing date. In addition, the deferment term may be one, two or three years.
So far as a product with a three-dimensional design is concerned, if the essential features of the design involve six sides, the applicant must submit an orthographic projection of a six-side view; however, if the essential features of the design of involve the view of one side or several sides only, the applicant must submit an orthographic projection view and space diagram of the side concerned, and indicate the reason for the omission of the view in the brief explanation provided.
For a product with a flat design, if the essential features of the design involve the view of one side only, the applicant should submit the orthographic projection view of the relevant side only.
There is no limitation to the number of drawings. If necessary, an exploded view, cutaway view, sectional view, enlarged view and a view of any states of variation may also be submitted. A reference view may be filed to indicate purpose, method or places of use.
Drawings should be made in accordance with the provisions of normal projection, using solid lines of even thickness. Shadow lines, indicative lines, dotted lines, central lines, size lines and dot-dash lines must not be used to show the shape of a design.
Photographs must be clear. The background of the photographs should be plain and avoid showing any other content than the claimed design. The product and background should have appropriate distinction in brightness to show the design clearly, avoiding strong light, blinking, shadow and reflection.
Where an application for a patent for design seeking concurrent protection of colours is filed, drawings or photographs in colour should be submitted.
It is possible to file a design application containing multiple similar designs in China. No more than 10 similar designs for the same product or two or more designs which are incorporated in products belonging to the same class and sold or used in sets may be filed as one application. For similar designs in one application, the other designs of the product should be similar to the main design indicated in the brief explanation.
For two or more designs belonging to the same class and sold or used in sets in one application, each product should belong to the same class in the classification of products and is customarily sold or used at the same time, and the designs incorporated in each product should have the same concept of design.
Further, design patent application of products in sets should not include similar designs for one or more product.
Examination and appeals procedure
After filing a design application, a preliminary examination (but not a substantive examination) will proceed. If there are no grounds for rejection, the National Intellectual Property Administration (CNIPA) will decide to grant the design patent right, issue the certificate of design patent, register and publish it.
During a preliminary examination, if an application document has defects that can be eliminated through rectifications, the examiner will conduct a comprehensive examination and issue a notification to make a rectification. For obvious substantive defects (including obvious novelty issue), the examiner will issue an office action. The prescribed time to respond is usually two months from receipt of the date of issue.
If the defects cannot be overcome, the examiner may make a rejection decision. Then, if the applicant is not satisfied with the decision, he or she may file a reexamination request with the Reexamination and Invalidation Department of the CNIPA and the board (consisting of three senior examiners) will make a reexamination. In case the board supports the rejection decision, the applicant may file an administrative lawsuit with the Beijing Intellectual Property Court within three months.
No opposition procedures are available under the existing Patent Law. For challenging the patentability of a design patent, an invalidation procedure may be initiated.
After passing the preliminary examination, the examiner should issue a notification to grant patent rights for designs and a notification to go through formalities of registration (ie, a granting notification). The applicant must then pay in due time the patent registration fee, the annual fee of the year when the patent right was granted, as well as any other relevant fees according to the notifications. The patent applicant will enter into the preparation phase for the announcement of granting the patent right and the grant itself will then be announced.
Removal from register
Where the applicant fails to go through the formalities of registration within the prescribed time limit according to the granting notification and fails to restore the right, the design application will be deemed to have been abandoned.
After registration, the patentee may request to abandon its patent right on its own initiative at any time by submitting a declaration of abandonment, signed or sealed by all the patentees without any additional conditions, or allow the patent to lapse by not paying the renewal fees. The abandonment of patent right refers to the abandonment of the entire patent right.
Validity of design patent
For revoking a design patent, an invalidity request may be filed with the Reexamination and Invalidation Department of the CNIPA, which will issue the Examination Decision on Request for Invalidation. Any party may apply for an administrative litigation against the invalidation decision in the Beijing Intellectual Property Court within three months of receipt of the decision. In such case, this party would be a plaintiff, the CNIPA would be a defendant and the opposite party would be a third party. After receiving the first-instance judgment, any party may appeal in the Beijing High People’s Court within 15 days for domestic appellants and 30 days for foreign appellants. The second-instance judgment would be the final judgment.
Infringement of design patent
After the grant of the patent for a design, no entity or individual may, without the authorisation of the patentee, exploit the patent, that is, make, offer to sell, sell in China or import into China, a product incorporating the patented design for production or business purposes.
The prescription for instituting legal proceedings concerning the infringement of patent rights is two years from the date on which the patentee or any interested party knows or should have known of the infringing act.
Before instituting legal proceedings, the patentee or any interested party should request the CNIPA to issue an evaluation report for the design patent, which usually shows the search results, patentability analysis and conclusion of the design patent. Infringement litigation also applies to the final review of the two trials.
In the first half of 2019, the infringement dispute case M&G Chenguang Stationery Co Ltd v Deli Group was one of 17 cases collected and published in the Supreme People’s Court Gazette. In this case, the plaintiff Chenguang claimed that the products manufactured by Deli infringed its design patent right ZL 200930231150.3 (Pen (AGP67101)). The focus of the argument was the similarity of designs, where the court opined that the principle of “whole observation and comprehensive judgment” should be followed. In this case, without creative labour, on the basis of the design patent, the implementation of the design patent by changing or adding design elements without substantive differences and patterns and colours constituted infringement on the design patent right.
Ownership changes and right transfers
Each design priority right, application right and patent right may be transferred by submitting the relevant assignments to the CNIPA. Licences for design patent rights are available.
There is some overlap between design rights and other rights under the existing legal system. A typical example of overlap between design rights and copyright in China is practical artwork, which may be protected by both laws.