CHANG TSI
Insights
On May 5, 2022, the Hague Agreement Concerning the International Registration of Industrial Designs (1999 Act) (hereinafter referred to as the “Hague Agreement”) officially became effective in China. On November 3rd, the China Patent Office issued the Guidelines aim to sort out procedures for submitting applications for international design registration through the Hague Agreement as well as notes for the examination and fees, etc., to help innovative entities develop product layouts globally. Here, we briefly introduce some key contents from the Guidelines.
(1) The Hague Agreement
The Hague Agreement is an international intellectual property agreement applicable to the field of industrial design and is administered by the World Intellectual Property Organization (WIPO). Through this agreement, the applicant may obtain design protection in several contracting parties after filing an international application. In recent years, the number of parties to the Hague Agreement continues to increase, and the influence of the Hague System continues to expand. As of October 2023, the Hague Agreement has 79 parties, covering 96 countries.
(2) Application Procedures for International Design Registration
The Hague system provides innovative entities with a simple and efficient international design registration process, which facilitates the centralized management of designs by innovative entities. To file an international design application through the Hague System, the applicant only needs to file one international application in one language (English, French, or Spanish), pay one currency (Swiss francs CHF), and register through one institution (International Bureau of WIPO). Then they may obtain design protection for at least 15 years in more than 90 countries.
An international design application can be filed directly or through the Office of the applicant’s Contracting Party to the International Bureau. The International Bureau will perform a formal examination, international registration, and publication. Afterward, the application will enter the Office of the Designated Party for examination to decide whether to issue a Notification of Refusal or to grant the design patent right. This Notification of Refusal is different from the Decision of Rejection issued by the China Patent Office. The applicant can respond to the Notification of refusal at the request of the Office of the Designated Party. The standard procedure for prosecuting an international design application through the Hague is illustrated as follows:
2. Things to Note during the Examination Procedure in the International Bureau
(1) Precautions related to application
Regarding eligibility to submit an international application. Any person who is a national of a State that is a Contracting Party or of a member State of an intergovernmental organization that is a Contracting Party, or has a domicile, a habitual residence or a real and effective industrial or commercial establishment in the territory of a Contracting Party, is entitled to file an international application. (1999 Act).
Regarding the preparation of application documents. The contents of an international application are divided into three categories: mandatory contents, additional mandatory contents, and optional elements. The mandatory contents consist of the information that has to be contained in every international application or accompany it. Additional mandatory contents are those under certain circumstances a Contracting Party whose Office is the Examining Office may notify the contents that must be included in the international application. Optional elements include appointing an agent, a declaration claiming the priority of an earlier application, etc.
(2) Precautions related to international registration and publication
In principle, the international registration date is the same as the filing date of the international application. If there are irregularities in the international application involving additional contents notified by the designated Contracting Party (such as a brief description, claims, etc.), then the date of the international registration shall be the date on which the International Bureau receives the correction of such irregularity or the filing date of the international application, whichever is later.
Unlike the practice in China, where the design application is published after being granted, the international design application needs to be published after registration with the International Bureau. The time of publication can be chosen by the applicant and is divided into the following three situations: i) immediate publication, i.e., published immediately after the entry of the industrial design registration in the International Register; iii) standard publication, 12 months after the international registration date, used as the default publication time; iii) selected-time publication, the applicant can choose a deferred time of less than 12 months, or choose a deferred time of more than 12 months according to the prompts on the application form (DM/1), and the maximum time shall not exceed 30 months.
When the State Intellectual Property Office (SIPO, also known as the China Patent Office) examines an international design application designated in China, the examination mainly involves the definition, novelty, clear expression, unity, etc. of the design. If the SIPO considers that an international design application designated in China does not meet the requirements, it will issue a Decision of Rejection within 12 months after international publication. The time limit for responding to a Decision of Rejection is generally 4 months. If no reason for rejection is found after examination by the SIPO, a Decision to Grant a Design Patent will be made and the International Bureau will be notified. After the granting of the international design application designated in China is announced, the applicant can request the SIPO to issue a copy of the patent register for the international design application as proof of protection in China.
Suppose the international design application published by the International Bureau includes a description containing the key points of the design. In that case, it shall be deemed that a brief description has been submitted per the regulations. If the applicant requests priority, the SIPO will not charge a priority request fee. Suppose a copy of the priority application documents is not submitted when filing an international design application. In that case, the applicant must submit the documents to the SIPO within 3 months from the date of international publication. If the international design application designated in China requires a grace period for novelty, supporting materials must be submitted within 2 months from the date of international publication, or they can be submitted at the time of filing. For applications that do not meet the unity requirements, the applicant may voluntarily file a divisional application within 2 months from the date of international publication or may file a divisional application based on the examiner's examination opinions.
About the Author: Bing Xiao
As a patent attorney/engineer, Mr. Xiao focuses on patent prosecution. He has successfully handled hundreds of patent filings and prosecuting cases covering various technical fields, ranging from Mechanical Engineering, cars, motocycles, to children’s safety seats and spraying devices. Mr. Xiao has also represented clients in patent re-examination cases.
Bing got his Bachelor and Master degree from Beihang University and University of Florida respectively. His prior research areas include but are not limited to Mechanical Engineering, Aerospace Engineering, materials science, with expertizing in structural designs & optimization. With his solid academic background, Bing Xiao is capable of utilizing his knowledge to provide desired solutions to clients. Bing has served clients such as Baidu,Graco, Newell, ITW, Hunter Douglas, Morgan Advanced Materials, Dayco, TVS, Kids2, B.Box and Britax.
During an executive meeting on November 3, 2023, the State Council, China's Cabinet, approved the Draft Implementation Rules of the Patent Law. As an important supporting regulation to ensure the implementation of the Patent Law, the revision of the Implementing Rules of the Patent Law has been highly anticipated since the fourth amendment of the Patent Law was passed. It has been three years since the China National Intellectual Property Administration (CNIPA) published the Proposals for Revisions to the Implementing Rules of the Patent Law (Draft for Comment) on November 27, 2020. With the approval of the Draft Implementation Rules at the State Council executive meeting, the formal version of the Implementation Rules of the Patent Law is expected to be officially released soon.
