Wilson Zhang
After China joins the Hague System on May 5, 2022, both domestic and foreign applicants can file an international design application with WIPO designating multiple countries or regions covered by the Hague System including China to obtain protection quickly, while simplifying the procedures and saving the costs. As the Hague System have very special provisions and China made certain declarations, the applicant has to know well about the related provisions of the Hague Agreement and CNIPA so as to take advantage of the advantages of the Hague Agreement and avoid rejection.
Here are some other important things to note about international design applications.
1. Upon joining the Hague Agreement, China made the following special declarations:
a) If no grounds for refusal are found in the examination of an international design application by the Chinese Patent Office, the Chinese Patent Office shall, within 12 months from the date of international publication, make the decision to grant protection and issue a declaration of grant of protection to the International Bureau. If there is an obvious substantive defect in the international design application, the Chinese Patent Office shall issue a notification of refusal to the International Bureau within 12 months from the date of international publication.
b) The international application for a design for a three-dimensional product must include a sufficient number of views, otherwise it may be finally rejected by the Chinese Patent Office on the grounds that the views as filed do not clearly show the claimed design. It is not possible to overcome said defect after the filing date.
c) The international design application must include a brief description describing the characteristics of the design for which protection is sought. In the absence of such a brief description, the applicant will receive a notification of refusal from the Chinese Patent Office, but said defect can be overcome by filing the missing brief description with the Chinese Patent Office.
d) An international design application may include no more than 10 similar designs, or a number of designs for “products in set” belonging to the same class in the International Design Classification, customarily sold or used at the same time, and where products in set share the same design concept. If the above provisions are not met, the applicant may receive a notification of refusal from the Chinese Patent Office.
2. After the international publication, the applicant shall take the initiative to handle the following matters with the Chinese Patent Office:
a) If a grace period for non-loss of novelty has been declared in the international application, the applicant shall submit to the Chinese Patent Office a certificate of non-loss of novelty grace period within two months from the date of international publication.
b) If priority has been claimed in the international application, the applicant does not need to pay the priority claim fee, but shall voluntarily submit a certified copy of the earlier application document within three months from the date of international publication, and does not need to submit a translation of the Chinese bibliographic version of the certified copy.
c) If priority has been claimed in the international design application and the applicant of the earlier and later applications is not the same, the applicant shall submit to the Chinese Patent Office a certificate of assignment and other supporting documents within three months from the date of international publication.
d) If the international design application has multiple designs that lack unity, the applicant may initiate and file a divisional application for any design that lacks unity within 2 months from the date of international publication.
3. When filing an international design application designating China, the applicant shall pay the individual designation fee to the International Bureau for the first phase of five years, totaling RMB 4,100 (equivalent to 497 Swiss francs). After the Chinese Patent Office makes the decision to grant protection to an international design application and publishes the design document, the design patent comes into force in China.
If the patentee fails to renew the design patent right in accordance with the provisions of the Hague Agreement upon the expiration of the 5-year or 10-year term of protection, the patent right shall be terminated in China from the date of expiration of 5 or 10 years.
4. Fees related to the international procedure for an international design application shall be paid directly to the International Bureau. If an application for the international registration of a design is filed through the Chinese Patent Office, the fees associated with the international design application can be paid to the International Bureau through the Chinese Patent Office.
After the expiration of the first five-year term of protection, the applicant needs to pay the second and third phases of the individual designation fees of RMB 7,600 (922 Swiss francs) and RMB 15,000 (1,820 Swiss francs) respectively to the International Bureau, so as to extend the protection of five and ten years and renew the designation.
5. After the international publication of the international design application designating China, the international design application will enter the examination procedure of the Chinese Patent Office. Unlike an invention application which can obtain the temporary protection after publication, an international design application cannot obtain the temporary protection similar to that of an invention patent application after international publication.
That is to say, after the international publication of an international design application, the applicant may not require any other unit or person implementing the design to pay an appropriate fee.
6. According to the provisions of the Paris Convention, an international design application may claim priority from an earlier filed design or utility model application within 6 months from the earlier filing date. According to the provisions of the new Chinese Patent Law and the Regulations, an international design application may also claim priority from an earlier filed invention patent application with respect to the same subject matter as shown in the drawings.
The applicant of an international design application may not file a request for withdrawing the priority with the Chinese Patent Office. If an international design application is not deemed to claim any priority by the Chinese Patent Office, such priority claiming cannot be restored through the restoration procedure.
7. When an international design application is filed with the International Bureau, the deferment of publication of up to 1-30 months may be requested. When an international design application is transmitted to the Chinese Patent Office after international publication, the applicant cannot apply to the Chinese Patent Office for a delay in examination or in publication.
8. In the absence of any prior agreement, the patentee of an international design application shall, within three months from the date of the announcement of the grant of the patent right, issue a minimum bonus of not less than RMB 1,500 to the designer.
9. In the absence of any prior agreement, in accordance with the provisions of the Law of the People's Republic of China on Promoting the Transformation of Scientific and Technological Achievements as amended on August 29, 2015, the patentee of an international design application shall give rewards and remuneration to the designer under the following circumstances:
a) if the design is transferred or licensed to another person for implementation, not less than 50% of the net income from the transfer or license of the design shall be paid to the designer;
b) where the design is used as an investment, not less than 50% of the shares or capital contribution ratio formed by the design shall be paid to the designer;
c) If the design is implemented on its own or in cooperation with others, the patentee shall extract not less than 5% of the operating profit from the implementation of the design every year for three to five consecutive years after the successful implementation of the transformation and production, which shall be paid to the designer.
10. After the international design application is granted by the Chinese Patent Office, the patentee may request the Chinese Patent Office to make a patent evaluation report after searching, analyzing and evaluating the said design patent, so as to serve as the evidence in the patent infringement dispute. The interested party or the alleged infringer may also take the initiative to request the Chinese Patent Office to issue a patent evaluation report. However, the Chinese Patent Office only issues the patent evaluation report once for the same design patent.
Conclusion
With China's accession to the Hague Agreement on May 5, 2022, domestic and foreign applicants can carry out product layout and innovation protection on the global scale more easily. Applicants will effectively protect their designs when they have a deep understanding of the various provisions and practice of the Hague Agreement. Hopefully the above interpretation will provide advice to applicants to better utilize the Hague System for international design protection.
Wilson Zhang
