Being published on December 21, 2023 and coming into effect on January 20, 2024, the newly revised implementation rules of the China's Patent Law (hereinafter referred to as the "New Rules") have introduced content regarding the specific examination procedures for international design patent applications as its 12th chapter, titled "Special Provisions on International Applications for Design Patents," also known as the Hague Agreement Chapter.
As the New Rules and new examination guidelines are implemented, China will essentially complete its alignment with the Hague Agreement, ensuring its smooth implementation in the country and effectively addressing the concerns about examination of domestic and international designers. This article will review China's journey in joining the Hague Agreement and its accompanying measures, introduce and analyze the Hague Agreement Chapter of the New Rules, discuss the possibility for a "Temporary Protection for Design Patents," and highlight two significant changes.
I. China's Journey in Joining the Hague Agreement
The Hague Agreement, formally known as the Hague Agreement Concerning the International Registration of Industrial Designs, is an international treaty among member countries of the Paris Convention. It establishes the Hague System for the protection of industrial designs. Together with the Madrid Agreement for international trademark registration and the Patent Cooperation Treaty (PCT) for inventions, it forms the system of international industrial property cooperation.
With the fourth amendment of the China's Patent Law in effect from June 1, 2021, China established protection for partial design patents (Article 2) and extended the design patent protection period to 15 years (Article 42). These developments paved the way for China's accession to the Hague Agreement.
On February 5, 2022, China deposited its instrument of accession to the 1999 Act of the Hague Agreement with the World Intellectual Property Organization (WIPO), which officially came into effect for China on May 5, 2022. As of October 2023, the 1999 Act of the Hague Agreement has 79 contracting parties, covering 96 countries/regions.
The implementation of the New Rules and the new examination guidelines on January 20, 2024, symbolizes the fundamental completion of China's alignment with the Hague Agreement from a systemic and normative perspective.
Additionally, CNIPA issued Guidelines on International Registration Applications for Design Patents, aimed at streamlining the process for submitting international registration applications for design patents through the Hague Agreement, focusing on procedure, examination considerations, and fees. This initiative supports innovators in effectively utilizing the Hague System for global product layout and promoting the innovation capability of industrial design.
II. International and National Phases: A General Timeline
The Hague Agreement and China's accompanying laws and regulations have set forth key timelines and deadlines for the international and national phases of design patent applications. These have been summarized in the following graphic illustration:
III. Temporary Protection for Design Patents
Article 13 of the China's Patent Law stipulates, "After the publication of an invention patent application, the applicant may require the entity or individual exploiting the said invention to pay an appropriate amount of royalties." This period, before the patent grant but after the application's publication, is referred to as the "temporary protection period." The Patent Law establishes this temporary protection period to safeguard ungranted patent applications, thereby maintaining the contributions of inventors and considering the balance of interests between patent owners and the public.
According to the issuance of the New Rules and new examination guidelines, it is clear that the publication process remains limited to inventions and utility models, but not the design patents. Consequently, design patents, particularly international applications, still lack a legal basis for a temporary protection.
However, given that the Hague Agreement stipulates a publication process for international design applications,[1] any application designating China will inevitably be published by WIPO before obtaining a Chinese design patent right. As mentioned earlier, China's current regulations do not explicitly provide a temporary protection for design patents (especially international applications), which can lead to an imbalance of interests between designers and the public.
On one hand, if temporary protection is not provided for international design applications designating China, these applications, once published by WIPO, become entirely exposed to potential copying and infringement without any legal protection for up to six months. For many products reliant on intricate designs, such as consumer and decorative goods, the aesthetic and price erosion caused by counterfeit products during this period is irreparable for the rights holder. It is foreseeable that the lack of temporary protection for international design applications designating China would diminish the interests of foreign applicants and dampen their enthusiasm for obtaining Chinese design patent rights through the Hague Agreement. From this perspective, providing temporary protection for these applications aligns more closely with the Patent Law's rationale and purpose for establishing a temporary protection system, i.e., preserving the contributions of designers.
On the other hand, applying a temporary protection period to international design applications also requires considering the balance of interests between patent holders and the public. Currently, although the Hague Agreement stipulates that WIPO's registration " shall be published by the International Bureau. Such publication shall be deemed in all Contracting Parties to be sufficient publicity, and no other publicity may be required of the holder," international design applications are only published in the International Designs Bulletin by WIPO, and in English, French, and Spanish only. Without Chinese publication by WIPO, it is inappropriate to simply assume that the Chinese public is in a state of "knowing or should have known" about these applications and should therefore pay fees for the design applications.
In summary, whether WIPO's publication can be considered a national phase publication and whether Article 13 of the China's Patent Law can be interpreted more broadly and applied to international design applications remain to be addressed in judicial practice.
IV. Two Notable Changes
With the implementation of the New Rules and guidelines, many changes will inevitably arise in the prosecution, invalidation, and enforcement of design patent rights, among which the following two points are particularly noteworthy:
i) Conflicting Designs
Article 23 of the China's Patent Law states, "Any design for which a patent right is to be granted shall not be a prior design; no entity or individual has filed a patent application for the identical design with the patent administration department under the State Council before the filing date and the content of the application is disclosed in patent documents announced after the filing date."
An identical design application which was filed by any entity or individual with CNIPA and published on or after the filing date of the patent concerned (including the filing date), is called "conflicting application".
According Article 23, a conflicting application for a design patent must simultaneously meet the following criteria:
- The identical design;
- An application submitted to CNIPA before the filing date;
- The same design recorded in the patent documents announced by CNIPA after the filing date.
Before joining the Hague Agreement, a conflicting application for a design patent was limited to applications submitted to CNIPA. However, after joining the Hague Agreement, design patent applications submitted by contracting parties to their respective national offices or the WIPO, if designating entry into China, may also constitute conflicting applications for Chinese design patents.
Specifically, design patent applications submitted by contracting parties to their respective national offices or WIPO, and designating entry into China, are deemed to have been filed with the CNIPA from the date of registration with WIPO. At this point, the application is not yet published by WIPO and thus does not constitute an prior design. Subsequently, if the international application is ultimately granted (and thus announced in the patent bulletin) by CNIPA, it constitutes a conflicting application for any Chinese design patent filed after its application date.
It is foreseeable that the number of conflicting applications faced by Chinese applicants will significantly increase, and the design patents granted will face more challenges in relating invalidation and enforcement proceedings.
ii) Freedom to Operate (FTO) Investigation
Before joining the Hague Agreement, FTO investigation involving design patents only required searching and analyzing design patents announced by the CNIPA.
After joining the Hague Agreement, given that the WIPO is going to publish the design patent applications, FTO investigation now also require searching for design patent applications designating entry into China published by WIPO. So that the potential risk of patent infringement caused by these applications, later entering China and getting granted, can be alerted.
Ⅴ. Conclusion
The New Rules strengthen the harmonization with Hague Agreement and clarify the specific examination procedures for international design patent applications, further facilitating the applicants. The implementation of the New Rules will not only benefit the implementation of the China's Patent Law and ensure smooth alignment with international treaties, but also trigger changes in current rules, bringing new challenges for designers in protecting their intellectual property rights.
[1] Article 10, Paragraph 3 of the Hague Agreement concerning [Publication] states: "(1) The international registration shall be published by the International Bureau. Such publication shall be considered sufficiently public in all contracting parties, and no further form of publication shall be required of the registrant."
Over the course of a more than 7 years career at NTD, Mr. Zhang has represented many patent litigation cases for many global companies including Nippon Steel, JDI, Panasonic, Johnson & Johnson, DuPont, Evonik, SVOLT, Great Wall Motors, SAIC Motor and many others. Also, Mr. Zhang provided the clients other services like patent invalidation, free to operation (FTO) assessment and IP strategy consulting. Mr. Zhang also has extensive experience over non-competition cases.
Mr. Zhang has comprehensive background and experience in automation and law. His expertise in technical fields includes green energy materials and devices, intelligent equipment, automobiles, automatic driving, IOT, LCD, AI and industrial design.
