CHANG TSI
Insights
On January 20, 2024, the amended Implementing Regulations of the Patent Law of China came into force. Rule 50 of the amended Regulations widens the scope of preliminary examination for design patent applications. Examiners must now check at this stage whether an application clearly fails the requirement of Article 23.2 of the Patent Law. Article 23.2 requires a design to be obviously different from prior designs. Before the change, this "obvious difference" requirement was a substantive standard. It is now expressly part of preliminary examination.
The Patent Examination Guidelines spell this out: "In preliminary examination, the examiner shall examine whether a design patent application clearly fails to comply with Article 23.2 of the Patent Law. Normally, the examiner may compare the claimed design individually with the prior designs available to the examiner to determine whether the application clearly fails to comply with Article 23.2." In practice, an examiner can now use whatever prior design information they find to test an application against the obvious-difference standard at the very first stage of examination.
Design examination in China is clearly becoming more rigorous. A systematic prior design search before filing is therefore more important than ever.
A systematic prior design search before filing serves three goals.
First, it identifies earlier designs that are identical or similar to the planned design. These may be granted patents, products shown on e-commerce platforms, designs in journals and publications, or designs disclosed through any other public channel. Finding them early helps the applicant avoid a rejection for lack of novelty or lack of obvious difference.
Second, it lets the applicant refine the design based on what the search finds. If a particular feature has already been disclosed, the applicant can modify the design before filing. The added distinctiveness strengthens patentability. Optimizing the design up front is usually far more efficient than arguing or amending after an office action has been issued.
Third, it gives the applicant a basis for anticipating how examination will go. Knowing the landscape of prior designs helps the applicant assess the likelihood of grant realistically. It also allows comparative analysis to be prepared in advance in case an office action has to be answered.
The Patent Evaluation Report is a key document for design patent holders. It is used in infringement actions, e-commerce platform complaints, customs recordals, and the defense of invalidation proceedings. At its core, the report compares the granted design with the closest prior design and assesses how different they are.
A design that was searched thoroughly and optimized before filing has a much better chance of a favorable conclusion after grant. In that case, the report finds no defect that would prevent the design from meeting the conditions for grant. A design filed without a prior search may well be granted. At the evaluation stage, however, the search may readily uncover a highly similar reference design. The result can be an unfavorable report. That weakens subsequent enforcement and may even provide grounds for invalidation.
A prior design search is very different from a routine patent information query. The searcher needs to:
Search professionals who previously worked as patent examiners often have an edge in this work. They understand examination practice and invalidation reasoning first-hand.
Comparison with prior designs is unavoidable at every stage of a design patent's life, from filing through to enforcement. A professional prior design search before filing improves the chances of grant. It also positions the patent for a sound Patent Evaluation Report after grant. That in turn gives a reliable foundation for both infringement enforcement and the defense of invalidation challenges.
