Introduction
On October 17, 2020, the Decision on the Amendments to the Patent Law of the People’s Republic of China was adopted by the Standing Committee of the 13th National People’s Congress (NPC), China’s top legislature, at its 22th session. The new Patent Law will come into effect on June 1, 2021. This article is focused on the amendments concerning the protection of design patent and provides insights into the amendments.
I. The protection of partial design
Under the existing regime of the Patent Law, the current Guidelines for Examination prescribe that: Situations that are ineligible for patent protection for design include: any component part of the product which cannot be partitioned or sold and used independently, such as the heel of socks, the peak of a hat, the handle of a cup, and so on.
The latest amendments to the Patent Law specify that partial designs shall become eligible as protectable subject matter of design patent. The new Patent Law in Article 2.3 prescribes that: “Design” means any new design of the shape, the pattern or their combination, and the combination of the color with shape or pattern, of a product, in whole or in part, which creates an aesthetic feeling and is suitable for industrial application.
First of all, the inclusion of partial designs into patent protection broadens the scope of patent-eligible subject matter. Without being limited to designs of the whole product, patentable designs will also include those that are made for certain part of the product. With constant technology development and product upgrading, some products (such as smart phones) as viewed in their entirety are virtually identical in appearance. Smart phones produced by different manufacturers tend to be superficially consistent when they are seen as a whole. An innovative design for such product is likely to be only directed to certain part of the product, where critical design elements are involved. Thus, under the new Patent Law, the applicant who files an application for design patent can protect its innovative design more efficiently.
Furthermore, partial design being eligible as patentable subject matter is also of great significance for the protection of designs involving Graphic User Interface (GUI). The GUI has unique design attributes. The protection of design with GUI in China was first mentioned in Announcement No.68, a regulatory document issued by the China National Intellectual Property Administration (CNIPA), in which the protection of design with GUI was introduced by making an amendment to the Guidelines for Examination. The amended Guidelines for Examination, which entered into force as of May 1, 2014, prescribe that: For product design that includes graphical user interface, the applicant shall submit the design views of the whole product. Clearly, pursuant to this provision, the design application with GUI must rely on a physical product, and the applicant must submit the required design views of the physical product including GUI.
With the development of Internet, E-commerce or Virtual Reality (VR) technology and other emerging industries, the CNIPA revised the regulations for the design applications involving GUI and issued Announcement No. 328, in which the provisions relating to GUI in the Guidelines for Examination were further amended. The revised provisions, which became effective as of November 1, 2019, prescribe that: If the essential features of the design only reside in the graphic user interface, the applicant shall submit at least one orthographic projection view of the display screen panel comprising the graphic user interface. It can be known that, the requirements for submitting the design views are relaxed, but the prerequisite that GUI has to be carried on a physical product remains unchanged. In spite of this, it seems that under the above provisions the examination rules on design with GUI focus increasingly greater importance on presenting the “design” itself, while correspondingly weakening the role of the physical product carrying the design.
According to the new Patent Law, partial design is eligible as protectable subject matter, and GUI may be regarded as a part of the display attribute of the product. This display attribute may be an integrated display interface which is carried on an electronic product (such as a phone or computer), or a display mode in which the display interface and the product are apart, such as a projector.
At present, the CNIPA is seeking comments from the public on the proposed Amendments to the Implementing Regulations of the Patent Law (available as Draft for public consultation). According to this Draft Amendments to the Implementing Regulations, for submission of views in an application for partial design, it is required that the applicant submit a view of the whole product and indicate the content asked for protection by drawing dotted lines in combination with solid lines or by other means. The “other means” mentioned here, which has not be defined explicitly in the Draft Amendments, may (as can be envisioned) refer to the means of highlighting the content asked for protection by coloring or using solid lines and transparent figures, and indicating it in the “Brief Explanation” portion of the filing documents. It is expected that the revised Guidelines for Examination to be introduced for implementing the new Patent Law will provide specific normative requirements for submitting the views for partial design, in particular those involving GUI.
Moreover, in accordance with the current Guidelines for Examination, comparison between designs is carried out through the approach of “whole observation and comprehensive judgment”. Although some design changes in certain parts will draw more attention than those in other parts, the overall judgment is not concluded merely from some parts or portions of the design. In practice, when the approach of “whole observation and comprehensive judgment” is adopted, the factors that will be considered typically include the percentage of the part where the difference lies over the whole product and the visual effect brought about by such difference from the view of an ordinary consumer who observes the whole product. Thus, when the essential features of the design for a product only reside in innovation in certain part of the product, the difference in the design of the whole product provided by the innovation in such part is likely to be neglected, as a result of which, the innovative design is determined to be substantially the same as the comparative design or not significantly different. For example, during the invalidation procedure, the petitioner usually asserts that the patent design and the prior design are substantially the same or not significantly different, as the difference lies only in minor changes in some fine details, which are not sufficient to have notable influence on the overall visual effect. On the other hand, an infringer may modify conventional part while copying the innovative part of the patent design, so as to circumvent infringement of the design patent. After partial designs of a product have been incorporated into the system of patent protection, whether the comparison between the claimed design and the prior design is still made through the approach of “whole observation and comprehensive judgment” would be an interesting question worthy of particular attention.
II. Right of domestic priority for design
The new Patent Law in Article 29.2 prescribes that:
If, within twelve months from the date the applicant first files an application for an invention or utility model patent in China, or within six months from the date the applicant first files an application for a design patent in China, and files a further application for the same subject matter with the patent administration department under the State Council for the same subject matter, the applicant may enjoy the right of priority.
In the amendments, domestic priority claim for design patent is added. Unlike an invention or utility model patent, a design patent is aimed at protecting any new design of a product which creates an aesthetic feeling and is suitable for industrial application, and does not involve technical improvements to the product. However, the appearance of a product determines the first impression formed by a consumer who intuitively feels about the product and thus is of important economic value. Unique and innovative design or classic design that has been used in the product is also favorable for establishing the image of the product and improving its market competitiveness.
On the procedural side, it is prescribed in Rule 32.2 of the proposed Amendments to the Implementing Regulations of the Patent Law (available as Draft for public consultation) that:
Where an applicant who files an application for a patent for design claims the right of domestic priority and if the earlier application is one for a patent for invention or utility model, the applicant may file an application for a patent for design for the same subject matter as shown in the drawings of the earlier application; if the earlier application is one for a patent for design, the applicant may file an application for a patent for design for the same subject matter. Where an applicant claims the domestic priority, the earlier application shall be deemed to be withdrawn from the date on which the later application is filed, except in the case that the applicant who files an application for a patent for design claims right of domestic priority on the basis of the application for a patent for invention or utility model.
This rule is newly added for the design patent application. According to this rule, the applicant may claim the right of domestic priority for design application based either on an earlier application for design, or the drawings in an earlier application for invention or utility model. Thus, the applicant can adopt more flexible strategies for filing patent applications and building a patent portfolio.
Recently, the World Intellectual Property Organization (WIPO) released the World Intellectual Property Indicators (WIPI) 2020 Report (the “Report”), noting the filing activities of applications for invention, utility model and design in 2019, and the comparison with those in 2018 as statistically shown in the table below:
As can be seen from the above table, the CNIPA received 711,617 design applicationss in 2019, accounting for 52.3% of the total applications worldwide and also ranked first in the filing numbers of applications for invention and utility model. When partial design of a product becomes eligible as patentable subject matter and the applicant may claim the right of domestic priority, it is expectable that there will be more applications to be filed for design.
III. The protection period for design patent right
The new Patent Law prescribes in Article 42 that: The duration of the invention patent right shall be 20 years, and that of the utility model patent right shall be 10 years, and that of the design patent right shall be 15 years respectively, all commencing from the filing date of the application.
In this amendment, the duration of the design patent right is extended from 10 years to 15 years, which is a critical modification made by China to be ready for joining The Hague Agreement Concerning the International Registration of Industrial Designs (the Act signed at Geneva on July 2, 1999) (hereinafter referred to as “The Hague Agreement”). Article 17 of The Hague Agreement prescribes that: Provided that the international registration is renewed, the duration of protection shall, in each of the designated Contracting Parties, be 15 years counted from the date of the international registration. Where the law of a designated Contracting Party prescribes for duration of protection of more than 15 years for an industrial design for which protection has been granted under that law, the duration of protection shall, provided that the international registration is renewed, be the same as that provided for by the law of that Contracting Party.
That is, the design patent right in the Contracting Parties to The Hague Agreement shall have the minimum duration of protection for 15 years. The applicant may, according to the market variations or life cycle of the product design, determine whether the duration of the design patent will be extended by renewing the international registration. With continuous economic development and globalization, there is a trend in various jurisdictions to strengthen the protection of the design patent right. For example, according to the newly revised Japanese Design Act (effective as of April 1, 2020), the duration of design patent shall be 25 years from the filing date, and according to the German Design Act, the duration of design patent shall also be 25 years from the filing date.
IV. Outlook on the international design applications under the Hague Agreement
The Hague Agreement, as a special treaty signed by Member States of the Paris Convention, provides a convenient channel for the applicants to file the international design applications, similar to the Patent Cooperation Treaty (PCT) for the patent applications for invention. The amendments to the Patent Law concerning designs are mostly directed to forward-looking adjustments introduced in efforts for proactively promoting China’s accession to the Hague Agreement.
In the proposed Amendments to the Implementing Regulations of the Patent Law (available as Draft for public consultation), a new chapter “Chapter XI Special Provisions on the International Design Application” has been specifically incorporated. Pursuant to the provisions specified under this chapter, an international design application may be filed in the following two ways: (1) the applicant may file an international design application directly with the International Bureau; or (2) the applicant may file an international design application with the Patent Administration Department under the State Council (i.e., CNIPA).
For an application filed in either of the above two manners, the applicant should pay attention to the means by which the filing date is determined. The Hague Agreement in Article 9 prescribes that: Where the international application is filed directly with the International Bureau, the filing date shall (except in the case where irregularities of the international application should be corrected) be the date on which the International Bureau receives the international application. Where the international application is filed indirectly through the Office of the applicant’s Contracting Party, in accordance with the provisions of the Common Regulations under the 1999 Act and the 1960 Act of the Hague Agreement (which came into force on February 1, 2021), the filing date shall be the date on which the international application was received by that Office, provided that it is received by the International Bureau within one month of that date; or in any other case, the date on which the International Bureau receives the international application.
Moreover, for an application filed in either manner, the applicant only needs to file the international design application in one language (English, French or Spanish) once, make payment of the fees using one currency (Swiss Franc), and designate the Contracting Parties in which it wishes to seek protection for design. After the application has passed the formality examination, the international design application may be registered and shall be published by the International Bureau.
In accordance with the Hague Agreement, the International Bureau shall, after the registration has been effected, send a copy of the international registration, along with any relevant statement, document or specimen accompanying the international application, to each Office that has notified the International Bureau that it wishes to receive such a copy and has been designated in the international application.
Thus, unlike the PCT applications, the applicant, after filing an international design application, is not required to file a separate request for entry with the designated Offices. Instead, the International Bureau shall send the copy of the international registration to each designated Office. This simplifies the procedures for the applicant to obtain multinational protection at a lower cost and makes it possible for the applicant to manage the applications in a centralized and unified manner.
On the procedural side, the International Bureau will only conduct formality examination on international design applications. Upon receipt of the copy of the application documents sent by the International Bureau, the designated Office shall initiate examination under the local legal provisions. According to Article 12 of the Hague Agreement, the Office of any designated Contracting Party may not refuse the effects of the international registration on the grounds that the requirements relating to the formalities of the international application are not met. Each designated Office shall, in accordance with the local legal provisions, conduct the examination, such as on novelty or unity, other than the formality issues, of the international design application. The Office that has not issued a notification of refusal can make an explanation to the International Bureau, indicating that it has granted protection for the design of the international registration; if the designated Office rejects the effects of the international registration, it shall issue a Notification of Refusal to the International Bureau within six months from the publication date of the international registration.
At present, according to the current Patent Law in China, where it is found after preliminary examination that there are no grounds for rejection of the patent application for design, the CNIPA shall make a decision to grant the patent right for design. According to the current Regulations for the Implementation of the Patent Law, after the announcement of the grant of the design patent, the patentee or any interested party may request the CNIPA to make a patent right evaluation report, wherein the CNIPA analyzes and evaluates whether the patent is in conformity with the granting conditions prescribed in the Patent Law and its Implementing Regulations. Under the Hague Agreement, for international design applications, since the International Bureau has conducted formality examination on the application, in principle, the Office of any Contracting Party cannot reject the application on the grounds that the application has formality defect(s). Therefore, after China’s accession to the Hague Agreement, whether the regulations over the preliminary examination of design applications and the relevant rules on making patent right evaluation report will be correspondingly adapted is an interesting question worthy of particular attention.
In addition, the highlights of international design applications also reside in the following two aspects: all the products which are involved in the industrial designs to which an international application relates, or in relation to which the industrial designs are to be used, shall belong to the same class of the International Classification, and the number of industrial designs included in an international application may not exceed 100. Thus, if there are multiple designs, which are not limited to similar designs, assembly or set designs, the applicant may consider submitting one design application to include these designs, as long as they belong to the same class under the International Classification for Industrial Designs; and much more designs can be included in one application than those in a regular national application, thereby improving the efficiency for filing at a reduced cost.
V. Conclusion
The new Patent Law strengthens the protection of design patents in China and gives a signal to encourage companies which are engaged in product designing innovations to proactively compete in the international market. Introduction of partial designs being eligible as protectable subject matter will broaden the scope of patent-eligible subject matter and enable the protection of designs for a product to be more accurate and intricate. This is undoubtedly good news for product designers. As the increasing enrichment and upgrading of products leave less room for designs of some products or parts thereof, how to make the product designs more innovative and favored by consumers is a greater challenge for the product designers. Also, with the formulation of the new Patent Law, China’s accession to the Hague Agreement is expected to become a reality soon. This will undoubtedly make it easier for domestic companies to strategically deploy in the oversea market and make more “Chinese designs” stand in the international arena.
