Article 31 paragraph 2 of the Chinese Patent Law reads,
“An application for a patent for design shall be limited to one design. Two or more similar designs of the same product or two or more designs which are incorporated in products belonging to the same class and being sold or used in set, may be filed as one application.”
Rule 35 paragraphs 1 and 2 of the Implementing Regulations of the Chinese Patent Law (i.e. the IRCPL) reads,
“Where two or more similar designs of the same product are filed in one application in accordance with the provisions of Article 31 paragraph two of the Patent Law, the other designs of the product shall be similar to the main design indicated in the brief description. The number of similar designs contained in an application for design shall not exceed 10.
The two or more designs belonging to the same class and being sold or used in set as referred to in Article 31 paragraph 2 of the Patent Law means that, each product incorporating the design belongs to the same class in the classification of products and is customarily sold or used at the same time, and the designs incorporated in each product have the same concept of design.”
Rule 28 paragraph 2 of the IRCPL reads,
“Where a patent application for design is filed for two or more similar designs incorporated in the same product, one of these designs shall be designated as the main design in the brief description.”
According to the above provisions, there are two cases where multiple designs are allowed to be incorporated in a single patent application for design, i.e. 1) similar designs of the same product and 2) designs of the products in set.
- SIMILAR DESIGNS OF THE SAME PRODUCT
For example, similar designs of a meal plate may be contained in a singe patent application for design. However, in the case that the designs are incorporated in a plate, a dish, a cup and a bowl respectively, although the products belong to the same class in the International Classification for Industrial Designs (i.e. the Locarno Classification), they are not so called “same product”. Even if the designs have the same concept of design, they cannot be contained in a singe patent application for design as similar designs of the same product. However, they can be contained in a singe patent application for design as designs of products in set.
In the brief description of the claimed designs, which is indispensable for a patent application for design, one of the designs shall be designated as the main design in the case of a patent application for similar designs. The remaining designs in the design application shall be similar to the main design for meeting the unity requirement. If a normal consumer finds that the difference between each of the remaining designs and the main design does not notably influence the overall visual effect of the product through an overall observation on them, the remaining designs might be deemed as similar to the main design. That is, other designs have one or more features the same as or similar to the features of the main design, and the difference between the main design and other similar designs lies in slight partial changes, the conventional feature of the type of the product, repeated arrangement of the units, the change of color, or the like. It doesn’t require a similarity among all of the designs.
Finally, the number of similar designs in one design application shall be no more than 10.
- DESIGNS OF PRODUCTS IN SET
The expression “two or more designs which are incorporated in products belonging to the same class and being sold or used in set” recited in Article 31, paragraph 2, requires not only that the products incorporating the designs belong to the same class in the Locarno Classification, but also that the products incorporating the designs have the same concept of design and are customarily sold or used at the same time, namely, when people use one product of the set, they often associate it with the existence of other products of the set. However, it does not necessarily mean use of the products of the set at the same moment.
So called “same concept of design” refers to the unity of the style of design of each product. Generally, the designs shall share the common dominating features of design.
A patent application for designs of products in set shall not include similar designs of one or more products of the set of products. That is, similar designs of the same product shall not be mixed with the designs of products in set.
- INVALIDATION, ENFORCEMENT AND DOUBLE PATENTING
Although only one patent right is issued to multiple designs fulfilling the unity requirement and being contained in a single design patent, the patentee may enforce his or her patent right based only on one of the designs without being affected by the remaining ones. In an invalidation proceeding, should one of the designs be announced invalid, it doesn’t go without saying that the remaining designs are invalid.
If designs which could be filed in a single patent application for design are filed separately and are granted design patents, it is risky that some of the design patents may be announced invalid in view of “double patenting”.
Incorporating the designs fulfilling the unity requirement in a single patent application for design will not affect enforcement of the patent right essentially and at the same time could extend the protection scope effectively.
In addition to designs of products in set, similar designs (i.e. embodiments or variants) of the same product are allowed to be contained in a single patent application for design in China. Although the number of similar designs which are allowed to be incorporated into a single patent application for design shall be no more than 10, it has been a great improvement as compared to the previous practice and could reduce the filing fees and annual fees greatly.
On the other hand, since only one patent right will be issued to designs fulfilling the unity requirement, the designs contained in the design patent shall be transferred or disposed of simultaneously in order to ensure that no conflict of right occurred in the future.
According to Rule 42 paragraph 1 of the IRCPL, the applicant may file a divisional application for a patent application for multiple designs within two months of receipt of the Notice of Allowance for the parent application at the latest. In the case that the examiner raises an objection to the unity of a patent application for multiple designs, the applicant may file a divisional application by the due date for responding to the objection and without being limited to the above-mentioned two month time limit.