Designs in China (referred to as “design patents” in that country) are protected under the Patent Law of the People’s Republic of China [in English]. This law took effect in 1985 and was amended in 1992, 2000, and 2008.
On June 1, 2021, a fourth reform will take effect, introducing significant changes regarding industrial designs. Indeed, it had become necessary to update certain aspects of industrial design protection in China in order to, among other things, harmonize it with the industrial design protection systems of the world’s leading offices. This will facilitate the protection of foreign designs in China while also improving the protection of Chinese applicants’ designs in other countries and offices.
This reform must also be viewed in the context of China’s preparations to accede to the Hague System for the International Protection of Industrial Designs, since, following the accessions of the EUIPO, South Korea, the U.S., and Japan, China is the only one of the IP5 countries (which includes the world’s five leading patent offices) that has not yet acceded to it.
Nor should we overlook China’s global significance in terms of the number of design applications filed. In recent years, the CNIPA has by far been the patent office that has received the largest number of design applications. For example, in both 2018 and 2019, the number of annual design applications in China exceeded 700,000, accounting for more than 50% of all design applications worldwide.
The main changes that will affect designs in China can be summarized as follows:
1. Extension of the legal term of protection for designs to 15 years.
Article 42(1) of the Patent Law extends the term of protection from 10 to 15 years, always counting from the filing date of the design application in China.
This extension of the term of protection for industrial designs in China is based on the Hague Agreement, which requires Contracting States to provide a minimum term of protection of 15 years for their national industrial designs.
2. Possibility of design protection for parts of a product.
Article 2(4) of the Patent Act has been amended to include in the definition of “design” the possibility that it may refer to “the whole or a part” of a product.
This amendment allows the scope of protection for designs to be extended to partial designs or designs of a part of a product.
Under this new provision, for example, it will be possible to protect the design of a part of a product more effectively, without having to protect the design of the entire product. Currently, the entire product must be depicted with a solid line, but after the reform, it will be possible to show only the part to be protected with a solid line and those parts of the product for which protection is not desired with a dashed line.
It is also expected that this new option for protecting partial designs or parts of a product will encourage the filing of new design applications, thereby improving protection against potential infringers. In fact, following the reform, it will only be necessary to copy the protected part (for example, the sole of a shoe or the handle of a tool)—and not the entire product—in order to take legal action against potential infringements.
This provision will bring China's practices in line with those of the other IP5 countries, since protection for the parts of a product is currently available in all of them.
3. The possibility of claiming internal priority for designs.
Article 29(2) of the Patent Law introduces the possibility of claiming domestic priority from a prior design application in China, within a period of 6 months, in order to allow for an improved filing of a subsequent design application.
Under the current system, if an applicant files a design application in China and the design undergoes improvements or modifications, a new design application must be filed. If the improved design involves only relatively minor changes, the design application would be vulnerable due to the existence of the first application.
The introduction of the option to claim internal priority for designs in China avoids these drawbacks, since once a design has been created, the applicant may file an initial design application to obtain an earlier filing date and then improve the design within 6 months of filing the initial application, claiming priority.
In summary, the reform of the industrial design protection system in China represents a significant step forward that will help encourage innovation in the field of design and improve legal certainty. Other aspects that could be modified—such as expanding the possibility of multiple design applications, or conducting a substantive examination or a search for prior designs during the processing phase—have not been included. Perhaps they will be addressed in a future reform.
Author: Pedro Saturio