The 11th meeting of the Standing Committee of the National
People's Congress for 2008 passed amendments to the PRC
Patent Law that take effect on September 1 2009. The
amendments are particularly important to the system and
treatment of design patents.
(i) Limitation on the granting of a design
No patent right shall be granted for two-dimensional printed
matter designs, colours, or a combination of both, or to be
mainly used for the function of an identifier. This amendment
improves the granting requirements on a design patent. To some
extent, this amendment should decreases the right conflict
problems among design patents, trademark rights and
(ii) Improvements on the requirements when granting a design
The new Patent Law adopts an absolute novelty requirement,
which is popular universally, and defines the prior art as a
design which has been known to the public before the date of
filing in China or abroad. If a design product has been
publicly used or sold abroad, but not published, it can be
granted a design patent. This has resulted in low quality
design patents being granted in China.
The new law requires that a granted design should not be
known to the public before the filing date in China or abroad.
This will increase the barriers to granting a design patent and
will keep many rubbish design patents out of the "patent
field". Additionally, any design for which a patent right may
be granted shall be substantively different from the prior
design, or a combination of the features of the prior design. A
design shall not be granted if such a design is a simple
combination of the prior existing designs. This regulation will
give good protection to prior designs and increase the
protection for the real right owners.
(iii) Allowing correlative designs to be included in one
Usually, a designer creates a new basic design and then
creates a series of relevant and similar designs shortly after
based on the initial basic design. These similar designs are
called correlative designs. According to the new amendments,
these series of relevant designs can be included in one
application. That is to say, two or more similar designs for
the same product may be submitted together in one application.
This amendment will not only reduce the workload of examiners
in the State Intellectual Property Office (SIPO), but also save
on costs for the applicant. At the same time, this new
regulation is in conformity with most other countries.
(iv) Establishment of a patent right appraisal system for
Like utility model patents, a patent right appraisal system
is being established for the design patent. This means that if
a design patentee is preparing to enforce the right, the
People's Court or the Administrative Authority for Patent
Affairs may ask the patentee to furnish a patent right
appraisal report made by SIPO. The patent right appraisal
report is prima facie evidence for the People's Court
and the administrative authority for patent affairs to
determine the validity of the patent right.
(v) Usage of brief explanation for protection scope of a
The scope of protection for a design shall be determined by
the design of the product as shown in the drawings or
photographs as filed. The brief explanation may help to explain
the design of the product in the drawings or photographs. This
amendment defines the brief explanation that can be used and
should enhance the importance of the explanation for confirming
the protection scope of a design patent. Such an amendment will
avoid the protection scope only based on the drawings or
photographs, and it also reduces some individual subjective
effects on the determination of identity or similarity of
Protection on Design Patent Rights
(i) Enhancement protection on a
design patent right
According to the present Patent Law, a patentee of a design
patent can apply to deter the infringing acts until the
infringing products are made or sold or input in China.
However, the patentee can not take any actions to stop
behaviour such as advertising or exhibiting infringing products
in public. Therefore, in order to block this option, "offering
for sale" is provided in the new law.
(ii) Judicial protection
A procedure for the preservation of evidence before
instituting legal proceedings has been added. In order to stop
an act of patent infringement, under the circumstance that
evidence might become extinct or hard to obtain, the patentee
or the interested party may request the People's Court to
preserve the evidence before instituting legal proceedings.
This will provide the patentee with more judicial protection to
secure their patent right.