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Influence of the new Patent Law on design application and protection

Issue: February 2009

Keywords (click to search): IP design application Patent Law design patent

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Xing Yue

Rouse

xyue@iprights.com

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.

Design application

(i) Limitation on the granting of a design
patent right

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 copyright.

(ii) Improvements on the requirements when granting a design patent right

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 application

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 design patents

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 design patent

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 designs.

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.