As a country having the largest number of design applications in the world, China has, according to its own need of industrial development, developed a mechanism of protecting industrial designs within the framework of patent law. A brief introduction of design system in China is given in this article. Moreover, a comparison between the design system in China and those in the European Union (EU) and the United States (US) is made, showing common and differences of these countries in design system.
(1) Subject matter as patentable for design
It is prescribed in Article 2 of the Patent Law of China that “'Design' means any new design of the shape, the pattern, or their combination, or the combination of the color with shape or pattern, of a product, which creates an aesthetic feeling and is fit for industrial application.” It can be seen that, in China, the subject matter suitable to be protected via a design patent does not relate to a technical solution, but to an aesthetic design scheme applied on the appearance of a product. Moreover, the product using the design scheme may be industrially manufactured in batches.
It should be noted that, no matter in the European Union, in the United States or in China, design protection is concerned solely with the ornamental appearance of a product, and not with technical functions of the product.
For the EU, a separate legislation (i.e., COUNCIL REGULATION (EC) No 6/2002 of 12 December 2001 on Community designs) is made for design protection. However, China provides protection for invention, utility model and design with a unified intellectual property law, which is different from the EU.
In addition, both the European Union and the United States can offer design protection for the appearance of a part of a product, and also for graphical user interface (GUI), which are not feasible in China.
For example, the Patent Law of China cannot provide design protection on component part(s) of a product which cannot be partitioned, such as the handle of a cup, the handle of a hairdryer, the tread of a tire, etc.
For another example, “the pattern shown when the product is electrified” is presently ineligible for patent protection for design in China. Accordingly, a design concerning the GUI of a product is excluded from design protection in China. It should be pointed out that China is now on the process of modifying the guidelines for patent examination, in order to adjust the situation ineligible for design protection from “the pattern shown when the product is electrified” to “the pattern shown on a display device of the product irrelevant to human-computer interaction or implementation of product functions”. In this way, design protection may be sought for certain patterns shown on the display device of the product.
(2) Examination procedure
According to Article 40 of the Patent Law of China, after a design application is accepted by the State Intellectual Property Office (SIPO), the SIPO shall make a decision to grant the patent right for design where it is found after preliminary examination that there is no cause for rejection of the application for design. In the examination stage of the design application, the examiner is merely required to perform preliminary examination, which includes: formal examination of the application documents, examination on obvious substantive defects of the application documents, and formal examination of other documents and relevant formalities, etc.
It is worth noting that, the EU deals with a design application in a similar way as China does during the examination stage. The Office of Harmonization for the Internal Market (OHIM) established in the EU may examine whether a design application complies with formal conditions after it receives the design application, and should in principle not perform substantive examination for the design application. In comparison, in the United States, the examiner must generally determine novelty and nonobviousness of a design application by a prior art search in the perti¬nent design classes during the examination stage. In addition, the EU allows an applicant for a registered Community design (RCD) to request, when filing the RCD application, that the publication of the RCD application be deferred for a period of 30 months from the date of filing the application (or from the date of priority, if any). The deferment of publication may, to some extent, maintain secrecy for the design application. However, China and the United States do not have a similar mechanism on secrecy.
(3) Application document
According to Article 27 of the Patent Law of China, where an application for a patent for design is filed, a request, drawings or photographs of the design and a brief explanation of the design shall be submitted.
One of the features of the design system in China is to prescribe that a design application must include a brief explanation. When determining the scope of protection of the patent right for design, the brief explanation may be used to interpret the design of the product as shown in the drawings or photographs. Further, Rule 28 of the Implementing Regulations of the Patent Law of China presents a specific provision on the brief explanation, which states that “the brief explanation of application for patent for design shall indicate the title and the use of the product incorporating the design, the essential feature of the design, and designate a drawing or photograph capable of best showing the essential feature of the design. Where a view of the product incorporating the design is omitted or where concurrent protection for color is claimed, it shall be indicated in the brief explanation.” That is, the applicant may include useful information for determining the scope of protection, such as design points and so on, in the brief explanation based on particular circumstances.
In comparison, a brief explanation is generally not necessary in a design application filed in the European Union or in the United States. In the EU, a design application may contain a description (similar to the brief explanation) explaining the representation or the specimen, which shall not affect the scope of protection of the design. If a Chinese design application is submitted, which claims the priority of an earlier application filed in the European Union or the United States, the applicant often need to add a brief explanation for the Chinese design application since the earlier application does not have the brief explanation. In view of the situation, Rule 31 of the Implementing Regulations of the Patent Law of China specifies that “Where any applicant claims a right of foreign priority for patent application for design, and no brief explanation of the design was contained in the earlier application, he or it will not be adversely affected as for enjoying the right of priority if the brief explanation submitted by the applicant in accordance with the provisions of Rule 28 of these Regulations does not go beyond the scope as shown in the drawings or photographs of the earlier application.”
(4) Other aspects
(1)The grace period concerning novelty
In China, a design application may enjoy the grace period concerning novelty. An application for design does not lose its novelty and inventive step where three events of disclosing contents of the design prescribed in Article 24 of the Patent Law of China occurred, if the design application is filed within six months after the occurrence of any of the three events. Specifically, the three events include: (1) first exhibiting the design at an international exhibition sponsored or recognized by the Chinese Government; (2) first making the design public at a prescribed academic or technological meeting; (3) disclosing the design by any person without the consent of the applicant. As to the EU and the United States, such grace period is twelve months, and a broader range of events can enjoy the grace period.
According to Article 29 of the Patent Law of China, a Chinese design application may only have the right to claim a foreign priority. For example, design application A is filed in accordance with The Hague Agreement concerning the International Deposit of Industrial Designs, while design application B is a Chinese design application. Thereafter, when design application C is filed in China, it can claim the priority of design application A, while it cannot claim the priority of design application B. Additionally, in China, a subsequent design application may only claim the priority of a previous patent application for design. For example, a Chinese design application cannot claim the priority of a foreign patent application for utility model.
However, the EU does not have such kinds of limitations. In the EU, an application for a design right or for a utility model filed in or for any State party to the Paris Convention for the Protection of Industrial Property, or to the Agreement establishing the World Trade Organisation, may be used as the basis of the right of priority for an RCD application. As to the United States, it is prescribed that design applications may not make a claim for priority of a US provisional application.
(3) An application including multiple designs
It is prescribed in Article 31 of the Patent Law of China that “Two or more similar designs for the same product or two or more designs which are incorporated in products belonging to the same class and sold or used in sets may be filed as one application.” According to Rule 35 of the Implementing Regulations of the Patent Law of China, the number of similar designs contained in an application for patent for design shall not exceed 10 where the similar designs are for the same product; as to designs of products sold or used in set, the products are required to belong to the same class in the International Classification for Industrial Designs.
In the United States, multiple designs may be presented in an application only if they involve a single inventive concept according to the obviousness-type double patenting practice for designs, which is similar to the corresponding law in China. Specifically, the multiple designs must have overall appearances with basically the same design characteristics, and the differences between the designs must be insufficient to patentably distinguish one design from the other. In the EU, several designs may be combined in an RCD application, where all products indicated for each and every design in the RCD application must fall in the same class of the Locarno Classification (i.e., unity of class); however, in the case of an RCD application in which all designs are for ornamentation, the “unity of class” does not apply.
(4) Term of protection
In China, the duration of patent right for designs shall be ten years counted from the date of filing. In the United States, the term of a design patent is 14 years measured from the date of grant.
In the EU, the OHIM has provided two types of protection for a design. The design may be protected by an unregistered Community design (UCD) for a period of three years as from the date on which the design was first made available to the public within the Community. The design may be protected by an RCD for a period of five years as from the date of the filing of the application, and the term of protection of the design may be renewed for one or more periods of five years each, up to a total term of 25 years from the date of filing.