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How patent law amendments will affect design patent practice

Issue: June 2009

Keywords (click to search): IP intellectual property design patent PRC Patent Law

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George Chan

gchan@iprights.com

Rouse

The third amendment to China's patent law, which will come into force on October 1, will introduce formal and substantive changes to design patent practice. This article summarises some of the key amendments to design patent law, and provides commentary on how the amendments will affect future design patent prosecution and invalidation.

Changes to design patent substantive law

Absolute novelty

Chinese patent law provides design patent protection for any "new design of a product's shape, pattern, or combination thereof, or the combination of its colour and shape or pattern, that creates an aesthetic feeling and is fit for industrial application".

Under the patent law, only prior designs that were (i) publicly disclosed in publications from anywhere in the world, or (ii) that had been publicly used or disclosed by other means in China, may be used to assess the novelty of a design patent. Article 23 of the amended patent law will introduce an absolute novelty requirement for patenting designs, such that a design patent right will not be granted for any design that had been made known to the public, in China or abroad, before the date of filing.

The adoption of an absolute novelty standard will facilitate the invalidation of design patents issued for three-dimensional designs. In general, these types of design patents are difficult to invalidate with publications only, which often do not provide a complete view of the design (front, side, back, top, bottom, etc.). An applicant seeking invalidation of such a design patent will usually have to resort to evidence of use or disclosure by other means to show that the design has been anticipated. Accordingly, the amendment will make more prior art available for the purposes of attacking the validity of such a design patent.

Two-dimensional design patents

Due to backlog at the China trade mark office, IP owners have turned to design patents as a means of obtaining early protection for product labels. The time requirement for registration of a trade mark is approximately two years. This is significantly longer than the nine and a half months required for the issuance of a design patent.

However, article 25, clause 6 of the amended patent law provides that no patent rights shall be granted for "two-dimensional printed matter whose pattern or colours or their combination to be mainly used as a marker". Depending on how the phrase "to be mainly used as a marker" will be interpreted in the future, this amendment may bring an end to the practice of acquiring design patent protection for product labels.

Changes to design patent formal law

Brief explanation of the design patent

Article 27 of the amended patent law stipulates that a brief explanation describing the design feature to be protected be included with any design patent application. This amendment should be a positive change for protecting patented design features that are incorporated as part of products.

The patent law provides that the scope of protection afforded a design patent is to be determined by referencing only the drawings or photographs in the patent file; and in cases where a design feature is incorporated in a product, the drawings or photographs of the patent application must show the design feature together with the product. It should also be noted that unlike other jurisdictions, which allow the use of dashed or dotted lines in their application drawings to delineate the design feature, in China, drawings that are to be submitted with a design patent application must use solid lines of even thickness.

Based on current law and practice, the courts and the Patent Reexamination Board (PRB) have sometimes encountered difficulties in discerning the inventive design feature of a product from drawings and photographs of the product that were submitted with the design patent application. Accordingly, this amendment will assist the courts and the PRB in distinguishing design features from their associated products.

Multiple designs in one patent application

Article 31 of the amended patent law is one of the essential revisions to design patent law and is referred to as the "affiliated design" clause.

Under the patent law, a single design patent is limited to one design. If design protection is sought for two or more similar designs associated with the same product (affiliated designs), multiple applications would need to be filed. In some cases this has led to the earliest design application being cited as conflicting with the later application(s) during examination or invalidation proceedings.

The amended patent law will allow two or more affiliate designs to be submitted together in one application provided that the brief explanation designates one fundamental design (core element) and that the affiliate designs share the same core element.

Overall, the "affiliated design" clause should provide greater protection for affiliated designs.

Rouse

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