Design protection in China’s amended Patent Law

By Liu Zongjie, Corner Stone & Partners
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The fourth amendment of the PRC Patent Law came into force on 1 June 2021. The amended law intensifies patent protection, promotes patent exploitation and employment, and improves the patent granting system, starting a new chapter in the patent protection system of China.

Highlights of the amendments affecting IP concern: (1) designs; (2) patents for pharmaceuticals; and (3) the punitive compensation system for patent infringements. This article summarises the amendments concerning designs.

Liu Zongjie, Senior patent counsel, Corner Stone & Partners
Liu Zongjie
Senior patent counsel
Corner Stone & Partners

Extended duration

The amended law extends the duration of design patent protection from 10 to 15 years, as stated in article 42: “The duration of the design patent right shall be 15 years, all commencing from the date of application.”

The duration of a design patent is mostly 15 or 25 years in the countries with a design patent protection system. Some quality designs in the industry come with relatively long product cycles, and some classic designs need longer protection. Therefore, the amendment both follows the international trend and meets the requirements of the industry.

China is also considering being party to the Hague Agreement Concerning the International Registration of Industrial Designs to further gear its IP protection towards international standards. This agreement is an effective channel through which Chinese companies file for registrations of industrial designs abroad, and it stipulates a minimum of 15 years of design patent protection. Consequently, the amendment will pave the way for China’s being party to the Hague Agreement.

Whether the existing design patents are still valid after 1 June 2021, and the design patent applications filed before 1 June 2021 are excluded from the extension of the design patent protection duration, remain to be confirmed in the coming implementing regulations, or to be specified in the interim measures imposed by the China National Intellectual Property Administration.

Partial design protection

The amended law included partial design in patent protection. Article 2 states: “Designs mean, with respect to a product in whole or in part, new designs of the shape, pattern, or their combination, or the combination of the colour with shape and pattern, which are rich in aesthetic appeal and are fit for industrial application.”

The protection of design patents was limited to “a product in whole” under the previous law, and resulted in partial innovative designs being easily imitated simply by piecing together and substitution. Under the previous law, the general principle of protection for design patents was “observing the whole and making a comprehensive judgment”, which meant judgment on a design patent was subject to a comparison between it and others in whole. This weakened the protection of partial designs. The amended law strengthens the protection of those designs that centre around a part or parts.

The introduction of the partial design protection system helps to solve the problem that the claim for right of foreign priority for designs of the countries that give protection to partial designs, e.g. Japan, would probably fail in the case of partial designs when they apply for design patents (with respect to a product in whole) in China, thus going with international trends in the design protection system.

However, setting the boundary between the whole and the part when filing patent applications, defining the scope of protection of partial designs when conducting examinations, and determining identicalness or similarity between partial designs remain to be specified in the coming implementing regulations of the patent law and the patent examination guidelines.

Domestic priority

The amended law also introduced the system of a right of domestic priority for designs. Article 29.2 states: “If, within six months from the date when the applicant … first files an application for a design patent in China, he/she files an application for a patent with the patent administration under the State Council for the same subject matter, the applicant may enjoy a right of priority.”

The previous law specified that the right of domestic priority might be enjoyed only in inventions or utility models. The amended law stipulates that the right of domestic priority may also be enjoyed in the case of designs, which grants domestic applicants a remedy for mistakes, if any. Since the term of examination of a design patent is very short, the timeframe of six months right of priority may be a window of opportunity for the applicant to resume his/her right in certain extreme circumstances. For example, when a design patent application is refused or withdrawn, the applicant may file the application again within the timeframe, after making necessary improvements.

Liu Zongjie is a senior patent counsel at Corner Stone & Partners

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