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October 2017
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Incoming Changes in Design Patent in China

Author: Nancy Qu, Bohan Li

Under the trend of the globalization, China is planning to take one step forward to improve the design patent legal environment. Specifically, China plans to amend the patent law in order to harmonize with the laws in other major member countries in universal design patent treaty.

Herein, we would like to comment on related provisions in the tentative draft of the fourth amendment of the patent law which reveals such intention. The tentative draft is published on the SIPO website at http://www.sipo.gov.cn/ztzl/ywzt/zlfjqssxzdscxg/xylzlfxg/201512/t20151202_1211994.html.

Article 2.4

Designs shall mean, with respect to entire or part of a product, new designs of the shape, pattern, the combination thereof, or the combination of the color with shape and pattern, which create an aesthetic feeling and are fit for industrial application.

According to the explanation from SIPO, the partial design in China still have two exclusions: 1. if a design can’t occupy a certain real space, then it cannot be regarded as a partial design. 2. The partial design should be relatively independent. For example, the tip part of the pen could be considered as a partial design and relatively independent. Detachable components of the assembly can either be protected as an entire design or a partial design.

The scope of the partial design should be specified in the description of the application. In the drawing or picture, and the dotted line and ambiguous part can be excluded from the partial design.

Internationally speaking, allowing part of a product and new designs as the subject matter of design patents can potentially lower the bar for international designs especially the U.S. designs entering China. In Chinese prosecution practice, a lot of applications claimed U.S priority are rejected for subject matter reasons. These applicants tend to file a design which represents a part of an entire design which includes but not limited to: an undetectable part of an assembly, or a pattern of an ornamental design, etc. Such filings are not allowable subject matter in China.

Design patents in China only need preliminary examination without substantive examination. During the preliminary examination, the examiner only rejects an application for subject matter reason and formality reason. “Partial design” is usually the major reason for design patent rejection. Therefore, by allowing part of design patent as subject matter, grant rate of designs claimed U.S. priority can be greatly improved.

However, domestically speaking, such amendments might result in the issue of low-quality design applications. Since Chinese design patents do not go through substantive examination proceedings in respect of novelty or inventiveness, by allowing part of the design as subject matter can cause the applications, which are a part of preexisting published patents or arts, flood in. In such case, the potential value possessed by granted design patents could be decreased.

Article 61.2

Where any infringement dispute relates to a patent for utility model or design, the people's court or the patent administration department may ask the patentee or any interested party to furnish an evaluation report of patent made by the patent administration department under the State Council after having conducted search, analysis and evaluation of the relevant utility model or design, and use it as evidence for hearing or handling the patent infringement dispute. Both parties can request the evaluation report above.

Such amendment aims for the harmonization with countries which have substantive examination.Although the amendment hasn’t published yet, the internal discussion is undergoing. For the reason that the evaluation report of the design patent is equivalent to the substantive examination in China to some extent. Including the defendant as a party to the civil lawsuit as a requesting party of the evaluation report could potentially enable defendants to make sure the stability of the subject patent before the substantial trial of the civil litigation.

Such amendment will greatly influence the court regarding whether to suspend the civil proceedings and wait for the outcome of the invalidation if the defendant filed an invalidation against the relevant patent in time. It also potentially eliminates the patent troll from enforcing design patents without substantive examinations.

Further, when facing an administrative complaint or a cease and desist letter regarding design patent infringement in China, the party being claimed of patent infringement might request the evaluation report if they notice the relevant design is unstable. The evaluation report will help the suspect design patent infringer to make a decision on whether to cooperate or negotiate with the patentee or file an invalidation against the relevant design patent in a short time.

Amendments above as long as the article 42 of the draft, which changes the patent term from 10 years to 15 years, is intended to harmonize with design patent rule of other major jurisdictions and international treaties rules. With the U.S., Japan, and Korea joining in Hague Convention, China also tries to join such universal design patent treaty. Including prolong the patent term, in order to meet the minimum requirement of the Hague Convention, allowing partial design as design patent subject matter, lowering the bar to file substantive examination of the design patent, China is also amending their design patent law in order to increase its influence in universal design patent protection.