Prosecuting industrial designs in China: An overview

Hi this is Jason Yang, a patent agent working at Gowling WLG Beijing office. In this video I would like to talk a little bit about the design protection in China as to how it can be filed currently. I will also briefly cover what is possibly changed to designs with the new amendment to the Chinese patent law.

Generally speaking, a Chinese design patent is simple to obtain because the patent office only carries out a preliminary examination instead of a substantive examination. It means that only formalities will be checked by an examiner. However, the formality requirements are more or less different from other popular jurisdictions, so it would be nice to have an idea about it before you make a decision.

A Chinese design has a protection term of 10 years since the filing date. This is probably the shortest among major jurisdictions but the good news is that the authority has decided to extend it to 15 years. I will cover that at the end of the video.

As for priority, one can claim priority to the design filing in China, as long as the Chinese filing date is within 6 months since the priority date.

The Chinese design is based on first-to-file mechanism so the priority has to be a design filing in another country. Importantly, unlike some of the most popular jurisdictions such as US, Canada, Europe and Japan, grace period is not possible in China, and this means, before filing your design in China, you cannot publicly disclose your product like on your website or in an exhibition. In other words, once the design is displayed publicly prior to the Chinese filing date, anyone can use it as prior art to oppose to your design right.

Once the design is filed, an examiner will see if the drawings fulfill the formality requirements, and if everything is alright, the design will be allowed usually in 6-12 months. And once the design is granted, maintenance fees need to be paid every year.

Under the current practice, a Chinese design protects an entire product ONLY, which means that the partial protection of a product is not possible. That being said, you can protect a component of a product such as the wheel boss shown on the right. Generally speaking, you can protect a 3D object showing its shape or a 2D object showing its pattern, and can also declare a color protection if needed.

As you can also see from these examples, a draftsman can prepare the design in any of these forms: line drawings, computer-rendered images, or pictures taken by a camera.

For fulfilling the Chinese requirements, if you would like to protect a 3D object, you need to prepare orthographic projection views without any perspective effect, and also an isometric view.

Unfortunately, the partial protection of a design is not allowed currently, so if you filed a design in another country like in Canada and there are dashed lines showing the portions not intended to be protected, you will need to either convert the dashed lines into solid lines or simply delete them.

On a positive note, in China, the patent office allows you to file a number of designs within a single application to substantially save cost. Compared with filing designs separately, you can save about 700 USD for filing fees and about 150-400 USD for annual maintenance fees for each additional design. You can file up to 10 different designs in a single application under 3 scenarios.

The 1^st scenario is that the designs have an overall similar shape. In this way, you can file designs with different levels of detail for a thorough protection of a design concept, like the example shown here.

The 2^nd scenario is to file a number of components as a set. The components need to be in the same category and need to be sold and used together, like for a 5.1 surround speaker system shown here, there are 4 different speakers and you can file a single application containing all the speakers. When they are filed in a set, each of the components is independently protected.

The 3^rd scenario is to file a number of components as an assembly. Each of the components is a standalone design but they need to be used together such as the combination of couch shown here. In this case, ONLY the assembly is going to be protected.

The previous slides sum up the current requirements for design filings in China, but there is something important happening. On October 17^th, 2020, China approved the 4^th amendment to the Patent Law, which will take effect on June 1^st, 2021. It has been 12 years since the last amendment and there are some important changes to industrial designs.

First, the term of protection of a design has extended from 10 years to 15 years, which is comparable to the term allowed by some patent offices such as USPTO.

Second, it is made clear that a design patent can protect only A PART OF the product, so it is finally possible to claim the partial protection of designs in China.

Although the specific requirements for the partial protection of a design haven't been released for now, but it is expected to be out in the near future. And hopefully the requirements are in line with other popular jurisdictions so an applicant doesn't need to adjust drawings just for China.

That concludes this video but if you have other questions re Chinese practices or filing strategies for both design and patent, please just drop me an email at Jason.Yang at GowlingWLG.com, and I hope to see you in the next one.