Zhang Wenda, Chen Shan
With the continuous development of industries, product designs have become increasingly sophisticated, leaving less room for overall innovation. Consequently, many enterprises are opting for personalized and refined designs for specific parts of their products. Decorative design for product components has emerged as a significant form of innovation in industrial design. The revised Patent Law, effective from June 1, 2021, and the new Implementing Regulations and Guidelines for Patent Examination to be enforced from January 20, 2024, contain specific provisions regarding partial design. The following discussion will provide insights into these provisions from a practical perspective.
(I) General Provisions on Partial Design in the Patent Law, Implementing Regulations, and Examination Guidelines
1. Patent Law Provisions on Partial Design
Article 2, Paragraph 4 of the Patent Law stipulates, " "Design" means any new design of the shape, the pattern, or their combination, or the combination of the color with shape or pattern, of a product or part thereof, which creates an aesthetic feeling and is fit for industrial application ".
According to this provision, the subject matter of design patents includes both the overall design and partial design of a product, opening the door for applications and protection of partial design patents.
2. Implementing Regulations on Partial Design
Rule 30, Paragraph 2 of the Implementing Regulations stipulates, "When applying for a partial design patent, views of the overall product should be submitted, and the content of the part to be protected should be indicated using a combination of solid and broken lines or in other ways." Rule 31, Paragraph 3 further stipulates, "When applying for a partial design patent, the request for protection should be clearly explained in the brief description, unless those already indicated by a combination of solid and broken lines in the views of the overall product."
3. Examination Guidelines on Partial Design
In the Examination Guidelines, Section 4 of Part 1, Chapter 3, "Examination of Application Documents for Design Patents" provides specific provisions on the application and examination of partial design. Subsection 4.4, "Partial Design" covers the product name, images or photographs of the partial design, and a brief description. Subsection 4.5.2, "Applying in the Form of Partial Design" specifies the requirements for views and brief descriptions of partial designs involving graphic user interfaces.
In Part 4, Chapter 5, "Examination of Design Patents in Invalidation Procedures“，both Section 5 and Section 6 state specific provisions for examining novelty and distinctiveness concerning partial design in invalidation procedures.
(II) Specific Provisions and Practices for Partial Design Patent Applications
1. Exclusion Scenarios for Partial Design Patent
Section 7.4 of Part 1, Chapter 3 of the Examination Guidelines provides scenarios where design patent rights cannot be granted, with two particularly related to partial designs:
(1) "Partial designs that cannot form a relatively independent area on the product or constitute a relatively complete design unit. For example, a random line on the handle of a cup or irregular parts of arbitrarily selected eyeglass lenses."
For instance, areas circled arbitrarily in the overall product, a single line or two lines in the product's outline, or portions lacking enclosed structural lines, outlines, or demarcation lines do not qualify for partial design patent protection unless they form a relatively independent area or a relatively complete design unit.
In cases where a partial design includes multiple separated parts, each should be evaluated on whether they form a relatively independent area or a relatively complete design unit, or whether they do not have unity.
If these parts are integral components of a single design, modification is required to connect them to create a relatively independent area or a relatively complete design unit. However, if these parts constitute independent designs, they can be considered as a single design. As per Part 1, Chapter 3, Section 9 of the Examination Guidelines, "Two or more unrelated partial designs of the same product, if functionally or design-wise related and creating a specific visual effect, can be considered as a single design. For example, the designs of two legs of glasses or the designs of four corners of a mobile phone." If these parts have functional or design-related connections and create a specific visual effect, they can be regarded as a single design. For instance, multiple separated mesh patterns on sports shoes can be considered as a single design.
(2) "Partial designs solely comprising surface patterns or the combination of patterns and colors on the product. For example, patterns on the surface of a motorcycle."
Partial designs consisting only of two-dimensional patterns on the product surface, or partial designs that are the combination of two-dimensional patterns and colors, are not eligible for design patent protection. Two-dimensional flat patterns, regardless of whether they are for existing flat or stereotypical products, cannot obtain partial design patent rights. For instance, partial flower patterns on a fabric or patterns on the side wall of a cup are not patentable. However, when two-dimensional patterns are combined with shape elements to form three-dimensional patterns, they do not fall under the above-mentioned scenarios. For example, decorative carvings on a wardrobe.
Additionally, Section 9.2 of Part 1, Chapter 3 of the Examination Guidelines, "Design of Kit Products" states, "The designs of various components in a kit product should be the overall design of the product, not partial designs of the product". In other words, various designs for a kit product should not include partial designs.
2. Preparation of Application Documents
2.1 Naming of Partial Design
Section 4.4.1 of Part 1, Chapter 3 of the Examination Guidelines stipulates, "When applying for a partial design patent, the product name should clearly state the protected part and the overall product, such as 'Car Door of an Automobile' or 'Camera of a Mobile Phone.'"
In practice, naming such as 'partial of' or 'part of' are not accepted. For parts without specific names, specific terms can be used to describe or limit the protected part, such as "Front of a Truck" or "Main Body of a Camera."
2.2 Images or Photographs of Partial Design
Rule 30, Paragraph 2 of the Implementing Regulations states, "When applying for a partial design patent, views of the overall product should be submitted, and the content of the part to be protected should be indicated using a combination of solid and broken lines or in other ways."
Section 4.4.2 of Part 1, Chapter 3 of the Examination Guidelines specifies,
"The views of the overall product should clearly show the partial design to be protected, as well as the position and proportion of this part in the overall product. If the protected part includes three-dimensional shapes, the views submitted should include a three-dimensional image that clearly shows this part.
The views submitted should be able to clearly distinguish the protected part from other parts. When using a combination of solid and broken lines to indicate the content to be protected, solid lines represent the protected part, and broken lines represent other parts. Other methods can also be used to indicate the content to be protected, such as covering the parts that do not need protection with a semi-transparent layer of a single color. If there is no clear demarcation line between the protected part and other parts, it should be represented by a dotted line."
According to these provisions, to clearly show the partial design, corresponding views of the overall product should be submitted. If the protected part includes three-dimensional shapes, a clear three-dimensional view of that part should also be submitted. Additionally, similar to requirements for overall design, the drawing of solid and broken lines should follow China's mechanical drawing standards, ensuring uniform, smooth, and clear lines without unnecessary shading, centerlines, or dimension lines.
In practice, besides using a semi-transparent layer of a single color to cover parts that do not need protection, different colors or color blocks can be used to distinguish the protected part from other parts. In such cases, colors with significant differences should be used to clearly show the protected part. Moreover, a combination of the solid and broken line method with other methods can be used to clearly show and define the protected part.
3. Modification of Application Documents
After submitting a design patent application, applicants can voluntarily modify the application documents within two months from the filing date or when responding to a correction notice or an office action. Additionally, when a divisional application is voluntarily or involuntarily filed, modifications can be made based on the application file of the parent case.
When modifying application documents, besides adhering to Article 33 of the Patent Law, which stipulates that modifications should not go beyond the scope indicated in the original drawings or photographs, applicants should also meet specific regulations in the Examination Guidelines. According to Section 10.1 of Part 1, Chapter 3 of the Examination Guidelines, if modifications are made beyond the two-month voluntary modification period, the following three types of modifications are not allowed:
(1) Changing an overall design to a partial design.
(2) Changing a partial design to an overall design.
(3) Changing one partial design of the same overall product to another partial design.
Similarly, these three types of modifications are not allowed when responding to an office action or filing a divisional application. Therefore, applicants should choose an appropriate time to modify application documents to avoid the consequences of modifications being unacceptable.
The above summary and introduction provide insights into the provisions and practices related to partial design in the modified Patent Law, Implementing Regulations, and Examination Guidelines. Partial design patent applications filed on or after January 20, 2024, will be subject to the revised Implementing Regulations and Examination Guidelines. As the system of partial design is a new regime in China, applicants should pay special attention to its unique regulations to avoid missing out on patent protection.
Zhang Wenda
Chen Shan
Ms. Chen's practice focuses mainly on patent prosecution. She has successfully represented some major corporations to handle thousands of patent filings and prosecuting cases covering various technical fields, particularly the fields of automobiles and engines. Ms. Chen has also represented clients in many patent reexamination cases, patent invalidation cases and patent litigation cases. In addition, Ms. Chen has also drafted many patent applications for clients and filed these patent applications in China and many countries outside of China, such as Europe.
