Wilson Zhang
The fourth amendment to the Patent Law came into force on June 1, 2021, and stipulates that the term of protection of design patent rights is 15 years. As a result, the provisions of the Chinese Patent Law on the term of protection of designs are in line with the Hague Agreement Concerning the International Registration of Industrial Designs (hereinafter referred to as the Hague Agreement).
On May 5, 2022, the Hague Agreement took into force in China. From May 5, 2022 to June 30, 2023, a total of 2,130 international design applications containing 4,091 designs have been filed by Chinese applicants.
The new Implementing Regulations of the Chinese Patent Law were promulgated on December 21, 2023, and will come into force on January 20, 2024, with the addition of special provisions on international design applications. The new Patent Examination Guidelines have added provisions on the handling and examination of international design applications, and set out some specific and detailed examination criteria.
The following is the detailed description of the procedures, documents, and formalities that the applicants of international design applications may encounter during the preliminary examination procedure at the Chinese Patent Office.
1. After the international design application is published at the International Bureau, it will be transmitted to the Chinese Patent Office. The Chinese Patent Office assigns a national filing number to the transmitted international design application and initiates the preliminary examination procedure. The Chinese Patent Office does not conduct any formality examination of international design applications. For example, even if the drawings of an international design application have certain formal defects such as shading lines, the Chinese Patent Office will not object to it.
However, in any other Chinese design applications than international design applications, the shading lines are still not permitted. In addition to the formality examination, the Chinese Patent Office examines the international design application as to obvious substantive defects, any other documents and related formalities, and the examination principles are the same with that for any other Chinese design applications.
2. When examining an international design application, the Chinese Patent Office will not object to the names of the views and their marking, but will examine whether the description containing the main points of the design is included in the international design application. If not, the Chinese Patent Office will issue a notification of refusal, requiring the applicant to submit the amended description in the response.
In the case of an international design application, the Chinese Patent Office will determine whether the design is clearly shown based on the drawings or photographs of the international design application, the product name and the description, which is part of the obvious substantive examination, or whether the design is novel or is obviously different from the prior designs.
3. For a international design application containing two or more designs, if it does not comply with the provisions of Article 31.2 of the Chinese Patent Law, the applicant may, within two months from the date of publication of the international application, take the initiative to amend the design application documents, retain only one or more designs that meet the requirements of unity, and delete the other design(s) that do not meet the unity requirements, so as to avoid a notice of refusal issued from the Chinese due to lack of unity.
If the applicant does not make the above voluntary amendments, he or she may receive a notification of refusal from the Chinese Patent Office. In that case, the applicant may delete the design that lacks unity in accordance with the examiner's office action, and file a divisional application for the deleted design at the latest within two months from the date of the publication in China.
4. If the applicant or patentee of an international design application wants to change its rights, it is necessary not only to go through the relevant procedures with the International Bureau and but also to submit supporting documents to the Chinese Patent Office at the same time. When the supporting documents are in a foreign language, a Chinese translation of the bibliography is also required, otherwise the change of rights will not take effect in China.
If the applicant or patentee wishes to change its name and/or address, only the relevant formalities need to be completed with the International Bureau.
5. After the international publication of the international design application, the Chinese Patent Office will conduct a preliminary examination of the international design application designating China. The documents examined may be the original English language version of the international design application published by the International Bureau, or the documents of the divisional application filed by the applicant on his own initiative within 2 months from the date of publication of the international design application.
6. A design does not lose novelty due to the earlier disclosure exhibited for the first time at an international exhibition sponsored or recognized by the Chinese government or due to the earlier disclosure published for the first time at a prescribed academic or technical conference. However, the applicant shall make declaration when filing the international design application and submit the supporting documents to the Chinese Patent Office within two months from the date of publication of the international design application.
In the case of the first disclosure for the purpose of public interest in the event of a state of emergency or extraordinary circumstances in China, or if the design is disclosed by others without the consent of the applicant, the applicant shall submit the corresponding supporting documents only if the Chinese Patent Office deems it necessary.
In either case, the Chinese Patent Office will examine the relevant date indicated in the supporting documents submitted by the applicant and whether the supporting documents are clearly related to the design for which protection is sought.
7. If there are obvious substantive defects in the international design application, the examiner will issue a notification of refusal to the International Bureau. Subsequently, the applicant will receive a transmitted notification of refusal from the International Bureau. In response to the notification of refusal, the applicant shall file a power of attorney with the Chinese Patent Office within 4 months, submit a response in Chinese, and make amendments to the application documents in English.
8. For any new defects in the reply documents submitted by the applicant, if these defects can be overcome by amendment, the applicant will receive a notification on correction of deficiencies. If the defect relates to an obvious substantive defect, the applicant may receive an office action. If the document as submitted in response to the notification or the office action fails to overcome the obvious substantive deficiencies indicated, the applicant may receive a decision of refusal.
9. The applicant may file a request for reexamination within 3 months after receiving the refusal decision issued by the Chinese Patent Office on the international design application.
10. If an international design application claims priority from an earlier application, the applicant shall submit a certified copy of the priority document to the Chinese Patent Office within three months from the date of publication.
If the applicant of an international design application is inconsistent with that of the earlier application, the applicant shall submit the relevant supporting documents to the Chinese Patent Office within three months from the date of publication.
Conclusion
On December 21, 2023, the Chinese Patent Office promulgated the Transitional Measures for the Implementation of the Revised Patent Law and its Implementation Rules Related to the Handling of Examination Operations. Article 16 of the Transitional Measures stipulates that from January 20, 2024, the CNIPA shall apply Articles 136 to 144 of the amended Implementing Rules for the Patent Law for the international design applications with filing dates after May 5, 2022. In other words, as long as an international design application has not been granted by January 20, 2024, the Chinese Patent Office will apply the latest provisions in the revised Regulations and Examination Guidelines.
As more and more applicants are obtaining design protection in China through the Hague System, it is very urgent and important to understand the specific procedures and provisions in the Hague Agreement, the Chinese Patent Law, Regulations and Guidelines, to grasp the latest regulations and examination practices of the Chinese Patent Office on international design applications, and to assess the possible risks and benefits. In a subsequent article, we will focus other important provisions and considerations for international design applications.
Wilson Zhang
