Third Revision of the “Implementing Regulations of the Patent Law of the People's Republic of China" – Design Patent Applications
In order to adapt to the changing demands of the new market development, further improve China's patent protection system, and align China's patent protection with international standards, the State Council issued the "Decision on Amending the Implementing Regulations of the Patent Law of the People's Republic of China" on December 11, 2023.
The "Implementing Regulations of the Patent Law of the People's Republic of China" was promulgated by Decree No. 306 of the State Council of the People's Republic of China on June 15, 2001. It underwent its first revision based on the Decision of the State Council on Amending the Implementing Regulations of the Patent Law of the People's Republic of China issued on December 28, 2002, and its second revision based on the Decision of the State Council on Amending the Implementing Regulations of the Patent Law of the People's Republic of China issued on January 9, 2010. The current third revision is in accordance with the Decision of the State Council on Amending the Implementing Regulations of the Patent Law of the People's Republic of China issued on December 11, 2023.
The revised "Implementing Regulations" has come into effect on January 20, 2024. This revision involves significant changes and adjustments to the system, overall representing an important response to the needs of innovation entities and an optimization of the patent legal system.
To assist you in better understanding the significant changes in the revised "Implementing Regulations of the Patent Law" and to better serve your needs regarding patent prosecution and protection, we have summarized and explained the relevant contents and procedures. We hereby introduce the new regulations concerning design patent applications, in conjunction with the related content from the newly revised "Guidelines for Patent Examination."
Adjustment to examples of non-patentable designs and non-patentable circumstances of designs
1. The following amendments and adjustments have been made to the section on the examples of non-patentable designs that violate laws or social morality or that are detrimental to the public interest.
(1) Designs for gambling equipment and drug paraphernalia are added to the list of examples of non-patentable designs that violate laws.
(2) Designs with vulgar content are added to the list of examples of non-patentable designs that violate social morality.
(3) Designs involving symbols and emblems of political parties are added to the list of examples of non-patentable designs that are detrimental to the public interest, whereas designs that cause adverse political impact are deleted from the list.
(4) "Designs using the Chinese national flag or national emblem as the pattern content" is amended to "Designs containing the content of the Chinese national flag or national emblem", which is also moved from the examples of designs that are detrimental to the public interest to the examples of designs that violate laws.
2. The following amendments and adjustments have been made to the section on the non-patentable circumstances of designs
(1) “Any component part of the product which cannot be partitioned or cannot be sold and used independently, such as the heel of socks, the peak of a hat, the handle of a cup, and so on;” and “any design for which the protection is sought is not the design of the normal state of the product, for example the design of the state of an animal made with a handkerchief” are deleted from non-patentable situations of designs.
(2) “A partial design that cannot form a relatively independent area on a product or constitute a relatively complete design unit; for example, a turning line in the mug handle, or an irregular part of an arbitrarily cut lens of an eyeglass” and “a claimed partial design that is only a design of the surface of a product or a combination of patterns and colors; for example, the pattern on the surface of a motorcycle” are added to non-patentable circumstances of designs.
Newly-added provisions regarding partial designs
1. Definition of partial design
Partial design refers to a new design that is aesthetically pleasing and suitable for industrial application, focusing on the partial shape, pattern, or their combination of a product, along with the combination of color and shape/pattern.
If protection is sought for parts of a product that cannot be separated, a patent application for a partial design should be submitted, for example, "carved patterns on a chair back".
2. Title of a partial design patent application
When a partial design patent application is filed, the title as filed should clearly indicate the specific part to be protected and the entire product it belongs to, for example, "Car Door of an Automobile" or "Camera Lens of a Mobile Phone."
3. Drawings or photographs of partial design
For a partial design patent application, it is necessary to submit views of the entire product, using a combination of solid and broken lines or other methods to indicate the claimed part.
The views of the entire product must clearly display the claimed partial design of the product, as well as the position and proportion of the claimed part(s) within the entire product. If the claimed part(s) include(s) three-dimensional shapes, the submitted views should include a perspective view that clearly shows said claimed part(s).
The submitted views must clearly distinguish the claimed part(s) from other parts. When a combination of solid and broken lines is used to indicate the claimed part, the solid lines represent the claimed part(s), while the broken lines represent other parts. Alternatively, other methods may be used to indicate the claimed part(s), such as covering the parts that do not require protection with a semi-transparent layer of a single color. If there is no clear boundary between the claimed part(s) and other parts, dotted lines should be used to indicate the boundary.
4. Brief description of partial design
The brief description for a partial design patent application must adhere to the following regulations:
(1) If methods other than a combination of solid and broken lines are used to represent the claimed part(s), the brief description must specify the claimed part(s).
(2) If dotted lines are used to indicate boundaries between the claimed part(s) and other parts, this should be specified in the brief description.
(3) The use of the claimed part(s) should be described and correspond to the use reflected in the title as filed.
(4) The drawing or photograph that is designated to best illustrate the key points of the design should include the claimed part(s).
Adjustment of examination under Article 31(2) of the Patent Law
1. Circumstances where partial designs of assembled products can be filed in one design patent application are added and clarified
(1) The design of an assembled product constitutes one design. An assembled product refers to a single product composed of multiple components, generally including the following three types of products depending on the assembly relationships:
- Assembled products with only one option of assembly, such as a juicer and ice shaver machine composed of a juice cup, ice shaving cup, and base, or a complete kitchen cabinet with stove, oven, and dishwasher.
- Assembled products with more than one option of assembly, such as building blocks that may be assembled into different shapes.
- Assembled products without an assembly relationship, such as playing cards. Multiple arbitrarily arranged items, for example, randomly placed decorations on a table, are not an assembled product.
(2) Two or more partial designs of the same product without a connected relationship that are functionally or design-related and create a specific visual effect may be treated as a single design. For example, the designs of the two temples of glasses or the four corners of a mobile phone.
2. Adjustment of the examination regulations for more than two similar designs of the same product
(1) Same product
In accordance with Article 31(2) of the Patent Law, each design within one application should be for the whole or a part of the same product, such as designs for different types of dining plates. If the designs are for dining plates, saucers, cups, and bowls respectively, although they all fall under the same category in the international classification for industrial designs, they are not considered as designs for the same product.
(2) Similar designs
In general, upon overall observation, if other designs and the base design share similar or identical design features, with differences lying in subtle variations within specific areas, common design practices for such products, repetitive arrangement of design elements, regular variations in the position and/or proportion of the partial design within the whole, or changes only in color elements, they are typically considered to be similar designs.
(3) Design of sets of products
The designs within a set of products should be the overall design of the product, rather than partial design of the product.
3. Adjustment of the requirements for divisional applications
(1) If the initial application contains more than two designs, a divisional application should consist of one or several designs from the initial application and must not go beyond the scope defined in the initial application.
(2) If the initial application pertains to the overall design of a product, it is not permissible to submit a partial portion of it as a divisional application. For example, if a patent application seeks to protect the overall design of a motorcycle, designs of components or parts of the motorcycle cannot be submitted as separate divisional applications.
(3) If the initial application concerns the design of a part of a product, it is not allowed to submit designs of the overall product or its other parts as divisional applications.
Adjustment of examination under Article 33 of the Patent Law
1. Voluntary amendment by the applicant
The applicant for a design patent application may file a voluntary amendment to the design patent application within 2 months from the filing date of such design patent application.
With regard to the voluntary amendment filed after the two-month period, if the amended documents address the deficiencies in the initial application documents, and increase the likelihood of approval for the application, the amended documents may be accepted.
However, the following voluntary amendments are not considered to address the deficiencies in the initial application documents, and the examiner will issue a Notification that Amendments Deemed Not to Have Been Submitted on the grounds that the two-month period for the voluntary amendment has lapsed:
(1) Changing an overall design to a partial design;
(2) Changing a partial design to an overall design; and
(3) Changing one specific partial design within the same overall product to another partial design.
2. Amendment(s) in response to defects pointed out in a notification
After receiving an Office Action or a Notification to Make Rectification issued from the CNIPA, the applicant shall make amendments to the patent application documents in response to the defects pointed out in the notification.
With regard to the amended documents filed by the applicant which contain amendments that are not pointed out in the notification, if said amendments are in conformity with the provisions of Article 33 of the Patent Law, address the deficiencies in the initial application documents and increase the likelihood of approval for the application, they may be considered as amendments addressing the defects specified in the notification. Such amended application documents shall be accepted.
However, the amendments, even though they do not go beyond the scope of the initial drawings or photographs, cannot be considered as addressing the deficiencies pointed out in the notification in the following circumstances and will therefore not be accepted:
(1) Changing an overall design to a partial design;
(2) Changing a partial design to an overall design; and
(3) Changing one specific partial design within the same overall product to another partial design.
Adjustment of examination for the GUI (graphical user interface )design applications
A design involving graphical user interfaces refers to the design which key points include the graphical user interfaces. Applicants may submit a GUI design application in the format of either the overall design of a product or the partial design of a product.
1. Submitting the application in the format of the overall design of a product
For the design of a product involving graphical user interfaces, the applicant may submit the application in the form of the overall design of the product.
If the key points of the design include both the design of the graphical user interface and the design of the product to which it applies, the views shall comply with the relevant drawing regulations in the Patent Examination Guidelines.
If the key point of the design solely focuses on the graphical user interface, the applicant shall at least submit orthographic projection views involving the graphical user interface and, if necessary, views of the graphical user interface itself. The brief description should clearly indicate that the key point of the design is solely on the graphical user interface.
2. Submitting the application in the format of the partial design of a product
For a design where its key point is solely on the graphical user interface, the applicant may submit the application in the format of a partial design. The partial design may include views with or without the product to which the graphical user interface applies. The brief description should specify that the key point of the design is solely on the graphical user interface or a specific part of the graphical user interface.
(1) Submitting the application in a manner that includes the product to which the graphical user interface is applied
If it is necessary to clearly display the positioning and proportional relationship of the graphical user interface design in the final product, the applicant may submit the application in a way that includes the product to which the graphical user interface is applied.
The applicant shall submit the orthographic projection view of the side that includes the graphical user interface as well as views of the graphical user interface itself.
When a design patent application is filed for a specific part of the graphical user interface, the title as filed shall specify the claimed part, such as, "search bar of the mobile payment graphical user interface of a phone."
The brief description shall clarify the use of the part for which protection is sought.
(2) Submitting the application in a manner that does not include the product to which the graphical user interface is applied
For a graphical user interface applicable to any electronic device, the applicant may submit applications in a manner that does not include the product to which the graphical user interface is applied.
Key terms like "electronic device" should be included in the title as filed, for example, "Video-on-demand graphical user interface for electronic devices," "Road navigation graphical user interface for electronic devices."
The applicant may only submit views of the graphical user interface. The product's use can be summarized as “a type of electronic device” in the brief description.
When a design patent application is filed for a specific part of the graphical user interface, the title as filed shall also specify the claimed part, for instance, "search bar of the mobile payment graphical user interface for electronic devices."
The brief description shall clarify the use of the partial design for which protection is sought.
Adjustment of the formulation of priority claims
1. Claiming foreign priority
For a design patent application claiming a foreign priority, the prior application should be an invention patent application, a utility model patent application, or a design patent application.
2. Claiming domestic priority
For a design patent application claiming a domestic priority, the prior application should be an invention patent application, a utility model patent application, or a design patent application; and it should not be a divisional application.
If an applicant claims a domestic priority for a design patent application, the prior application is deemed withdrawn from the date of the filing of the subsequent application. However, this withdrawal does not apply if the applicant claims domestic priority from an invention or utility model patent application. The prior application that is deemed withdrawn cannot be restored.
Deferred Examination
Applicants may request deferred examination at the time of filling a design patent application. The examination is deferred on a monthly basis, and the maximum duration of deferral is 36 months starting from the effective date of the request for deferred examination. After the expiration of the deferral period, the patent application will be examined in its regular order.
Prior to the expiration date of the deferral period, the applicant may also request the withdrawal of the request for deferred examination. Where the requirements are met, the deferral period will terminate, and the patent application will be examined in its regular order.
Adding international design applications
1. Filing an International Design Application (1) Submission channels
An international design application may be directly submitted to the WIPO. If the applicant has a habitual residence or business premises in China, they may submit the application to the WIPO through the CNIPA.
(2) Determination of receipt date
For an international design application submitted to the WIPO through the CNIPA, if the WIPO receives the application within one month from the date it was received by the CNIPA, the date when the CNIPA received it is considered as the date of receipt by the WIPO. Otherwise, the actual date of receipt by the WIPO will be considered as the receipt date.
(3) Conditions for transmission from the CNIPA to the WIPO
The CNIPA transmits an international design application to the WIPO if it meets the following conditions:
(a) At least one applicant has a habitual residence or business premises in China;
(b) At least one applicant selects China as a contracting party;
(c) The application documents are written in English;
(d) Formal forms prescribed by the Hague Agreement are used;
(e) Drawings or photographs of the design are included in the application documents;
(f) China’s mainland contact information in Chinese is provided;
(g) The application documents do not contain information that violates laws, social morality, or public interests.
(4) Transmission and non-transmission procedures
For international design applications that meet the transmission conditions, the CNIPA issues a Notification of Transmission of International Design Registration Application to the applicant. If the application does not meet the transmission conditions, the CNIPA sends a Notification of Non-transmission of International Design Registration Application to the applicant, stating the reasons for non-acceptance.
For international design applications submitted through the CNIPA, subsequent documents must be directly submitted to the WIPO by the applicant.
2. International publication
After an international design application passes the formal examination by the WIPO, the international design registration will be granted. Subsequently, the WIPO will publish it in the International Design Gazette.
The international registration publication includes standard publication, immediate publication, and publication at a chosen time. Applicants can choose immediate publication or publication at a chosen time when submitting the application; if no selection is made, the WIPO will proceed with standard publication of the international design application.
(1) Standard Publication
The WIPO will publish international design applications that meet the requirements. Typically, an international design application will be published 12 months after its international registration date. Before the deadline expires, applicants may request early publication.
(2) Immediate publication
If an applicant requests immediate publication, the WIPO will publish the international design application immediately after completing the necessary preparations for international registration.
(3) Publication at a chosen time
If an applicant requests publication at a chosen time, the WIPO will publish the international design application according to the time chosen by the applicant (up to thirty months from the filing date or priority date). Before the chosen publication date, the applicant may request early publication.
3. Processing of the international design applications designating China
(1) Determination of Chinese Filing Date: The international registration date is considered as the filing date in China.
(2) National Application Number: After the international design application is published by the WIPO, the CNIPA assigns a national application number and proceeds with subsequent examination.
4. Examination of the international design applications designating China
(1) Text for examination basis
The English text of the international design application published by the WIPO; the amended text submitted in accordance with Rule 141 of the Implementing Regulations of the Patent Law; or the English rectification text submitted in accordance with Rule 50 of the Implementing Regulations of the Patent Law.
(2) Principles of examination
The principles of examination for international design applications are as follows:
(a) Formal or content examination of the application follows the provisions of the Hague Agreement and the Common Regulations under the 1999 Act and the 1960 Act. The examiner will not reject an international design application based on formal defects in the application documents.
(b) Examination for significant substantive defects and other documents and relevant procedures follows the provisions of the Chinese Patent Law, its Implementing Regulations, and Examination Guidelines.
(3) Priority
An applicant who files an international design application through the Hague System within six months of first filing a patent application on the same subject matter can enjoy priority without paying a priority claim fee if they designate China.
If a domestic priority is claimed, the prior application must meet the following conditions:
(a) The prior application is not a divisional application;
(b) The prior application has not claimed any foreign or domestic priority before, or even if it has claimed foreign or domestic priority before, it has not enjoyed priority;
(c) The prior application had not been granted by the filing date of the subsequent application.
After a preliminary examination determines that a domestic priority claim of an application meets the requirements, if the prior application is a design patent application, it is deemed withdrawn from the date of filing the subsequent application; such prior applications which are deemed withdrawn cannot be restored.
If an international design application does not meet the above-mentioned rules concerning priority or if the applicant fails to submit copies of the prior application or relevant proof before the deadline, the priority claim is deemed not to have been made and cannot be restored.
Applicants are not allowed to withdraw a priority claim with the CNIPA.
(4) Non-prejudicial disclosures
If an international design registration application falls under the following circumstances, the applicant may declare a non-prejudicial disclosure at the time of filing the application and within two months from the international publication date, submit proof documents before the CNIPA:
a) where it was first exhibited at an international exhibition sponsored or recognized by the Chinese Government; or
b) where it was first made public at a prescribed academic or technological meeting;
If an international design registration application falls under the following circumstances, the CNIPA may, when deeming it necessary, request the applicant to submit supporting documents within a specified period:
c) where it was first disclosed for public interest purposes in case of a national emergency or any extraordinary state of affairs occurs; or
d) where it was disclosed by another person without the consent of the applicant.
(5) Examination of drawings or photographs
The drawings or photographs submitted by the applicant should clearly show the overall or partial design of the product to be protected.
Views should have corresponding projection relationships, a single background, and only include the design to be protected. Line drawings may be submitted but technical drawings with axes and dimension labels should not be included.
Portions not claimed may be indicated using broken lines or semi-transparent shading, with explanations provided in a brief description.
It should be explained in the brief description that reference views showing the product in use, its environment, and other objects are not to be protected.
Regarding the design of three-dimensional products, if the key points of the design involve all six sides, orthographic projection views of the six sides should be submitted. If the key point of the design only involves one or a few sides, orthographic projection views of the involved sides should be provided. For other sides, either orthographic projection views or perspective views can be submitted. Views of the sides that are not easily visible or cannot be seen when the product is being used may be omitted, but reasons for the omission must be stated in the brief description.
For views submitted in the manner of a partial design application, a perspective view of the entire product containing the claimed part must also be submitted.
(6) Examination of brief description
If an international design application published by the WIPO includes a description containing the key point of the design, it is deemed as having submitted a brief description in accordance with Rule 31 of the Implementing Regulations of the Patent Law.
Key points of the design refer to the shape, pattern, and their combination or the combination of color with shape and pattern of a product that distinguish the product from existing designs, which can also pertain to a specific part of the product. If protection for color is requested, this should also be indicated in the brief description.
(7) Divisional applications
If an international design application includes two or more designs, the applicant may voluntarily submit a divisional application or submit one based on the examiner's examination opinions. A divisional application is treated as a Chinese design patent application for examination.
When voluntarily filing a divisional application, the applicant should do so within two months from the international publication date of the international design application. If the divisional application is filed based on the examiner's examination opinions, the divisional application must be filed within 2 months from the domestic publication date of the international design application at the latest.
After the specified deadline has passed, or if the international design application has been rejected, or deemed withdrawn without restoration of rights, generally a divisional application cannot be filed.
(8) Notification of Refusal and its response
If there are significant substantive defects in an international design application, the CNIPA will issue a Notification of Refusal to the WIPO, detailing all reasons for rejection along with relevant legal provisions.
Upon receiving the Notification of Refusal, the applicant must, within a specified period (usually 4 months from the issue date of the notification), complete the necessary entrustment procedures as per Article 18 of the Patent Law and submit a response to the notification. The response should be made in Chinese and amendments to the application documents should be made in English.
In cases where new defects arise in the response documents as filed, if they can be overcome through rectifications, the examiner will conduct a comprehensive examination again and issue a Notification to Make Rectification to the applicant. If the new defect represents a significant substantive issue that cannot be overcome through rectifications, the examiner will issue an Office Action to the applicant.
(9) Domestic publication
After the CNIPA decides to grant an international design application, it will publish the decision domestically. The international design patent becomes effective in China from the date of the domestic publication.
Regarding other matters already published by the WIPO, except those involving changes in rights, the WIPO's publication shall prevail.
Following the publication, the applicant of the international design application may request the CNIPA to issue a copy of the Patent Register of International Applications for Designs as proof of protection granted in China.
(10) Termination of patent due to non-renewal
After the CNIPA's publication of grant for an international design application, if the patentee fails to renew the patent in accordance with the Hague Agreement provisions, the patent terminates either 5 years or 10 years from the filing date in China.
(11) Partial withdrawal of rights
After the CNIPA's publication of grant for an international design application, if the patentee requests a partial withdrawal of rights concerning China with the WIPO, the effective date of this partial withdrawal is the date of registration by the WIPO.
(12) Fee Payment
The international fees associated with the international process of an international design application must be paid directly to the WIPO.
For international design applications submitted through the CNIPA, the relevant fees may be paid to the WIPO through the CNIPA. The date when the WIPO receives the fees in its account is considered to be the date of payment.
The individual designation fee collected by the WIPO for an international design application will be transferred to the CNIPA. The CNIPA does not provide refunds for these fees.
Regarding fee-related matters in the international process, applicants should directly liaise with the WIPO.
Adjustment of standards relating to the examination of design patents in invalidation proceedings
1. Conditions for patent grant
The existing design features that can be used for combination should be designs that are physically or visually distinguishable, possessing relatively independent visual effects. Arbitrary divisions of points, lines, or planes do not qualify as existing design features that can be used for combination. However, in the case of partial designs, corresponding parts in existing designs may be considered as existing design features that can be used for combination.
2. Identical Designs
For partial designs, products of the same kind refer to products where the use of the product and the use of that particular part are identical.
3. Substantially Identical Designs
For partial designs, to determine if they belong to similar kinds of products, it is necessary to consider both the product's overall purpose and the specific function of that part.
If upon overall observation, ordinary consumers can discern that the difference between the patent in question and a comparative design lies solely in routine variations in the position and/or proportional relationships of the claimed part in the overall product, then the patent in question is deemed to be substantially identical to the comparative design.
4. Determining the Patent in Question
For partial designs, the shape, pattern, and color of the claimed part should be considered, taking into account the position and proportional relationships of that part in the depicted product.
If you have any questions on the article above, or need any assistance on IP matters such as patent, trademark, litigation, and protection, please feel free to contact us.
For patent related matters, please e-mail to patent@afdip.com or call us at +86 (10) 82730790.
For trademark, litigation or other legal matters, please e-mail to bhtdlaw@bhtdlaw.com or call us at +86 (10) 82737958.