CHANG TSI
Insights
As the world's two largest economies, China and the United States have frequent and in-depth trade and economic relationships. Design patents serve as a powerful legal tool, granting the patentee exclusive rights to prevent others from making, using, selling, or importing products with a substantially similar design. They provide a shield of protection against unauthorized copying or imitation, allowing businesses to maintain their brand identity and ensure differentiation in the global marketplace. Thus, design patents play a vital role in both countries. However, there are critical differences between China and the United States in the prosecution and enforcement of design patents that significantly affect the intellectual property (IP) strategies of multinational corporations.
China: Design patent protection covers the overall or partial shape, pattern, and combination thereof of a product, as well as the combination of color with shape and pattern, provided that the design is associated with an industrial product. The three major elements of design patents are shape, pattern, and color.
United States: Design patent protection has a broad scope, covering the shape, pattern, decoration, and other appearance features of a product. It allows partial design protection for a part of a product, and the protected objects include not only physical products but also virtual designs.
China: Design patent applications undergo a preliminary examination system. Generally, only a formal examination is conducted, not a substantive examination. The examination process is relatively fast, usually completed within 4 to 6 months.
United States: In addition to a formal examination, a substantive examination is required. A design patent must meet the requirements of aesthetic/ornamental innovation, novelty, and non-obviousness to pass the examination and be granted. If the application fails to meet the requirements for allowance, the examiner will issue an Office Action. The applicant can then amend the application documents or submit an observation accordingly. If the amendments still do not meet the requirements, the application will be rejected. Therefore, the examination cycle is longer, generally taking 12-18 months.
China: The basic principle is "holistic observation and comprehensive judgment." This involves analyzing and comparing the overall visual effects of the granted design and the allegedly infringing product, considering all influencing factors, to determine whether there is a substantial difference in the overall visual effect.
United States: The primary method used is the "ordinary observer" test, combined with innovative feature detection and three-way comparison methods. Infringement determination considers not only the similarity of the overall visual effect but also the innovative features of the design and its differences from existing designs.
China: Line drawings, computer-rendered images and photographs are acceptable. However, surface shading lines are unacceptable.
United States: Line drawings, computer-rendered images and photographs are acceptable. Unlike in China, surface shading lines are required for line drawings.
China: China has had a grace period (time within which a public disclosure is not counted against novelty) in its patent law for quite some time now, though it has been woefully narrow and not really applicable to most foreign clients. Notably, public disclosures that could enjoy the grace period exception include academic or technical conferences held by international organizations recognized by the relevant departments under the State Council. Article 24 of the 4th amendment of the Chinese patent law introduced a 6-Month Grace Period for disclosures made during emergency/extraordinary situations. When an emergency or extraordinary situation – such as public health incidents like pandemic prevention and control – occurs in the country (China), a public disclosure for public interest will not destroy the novelty of a patent application filed within 6 months from such public disclosure. Technically speaking, there is no grace period for most foreign clients.
United States: Design patents enjoy a 12-month grace period. During this period, even if the design is disclosed (including in printed publications, publicly used or sold in the United States), its novelty is not affected as long as the disclosure is made by the applicant or the information originates from the applicant.
China: After the Fourth Amendment to the China Patent Law, the protection period for design patents changed from "10 years from the application date" to "15 years from the application date."
United States: The protection period for design patents in the United States is 15 years from the grant date.
The above is a summary of the comparison of the design patent protection systems of China and the United States. Multinational corporations should fully consider the differences between the patent systems of the two countries when applying for design patents, and formulate more targeted intellectual property strategies to effectively protect their innovations and enhance their competitiveness in the global market.
