In October, 2020, the Standing Committee of the National People’s Congress approved the Fourth Amendment to China Patent Law (“CPL”), which is scheduled to take effect on June 1, 2021. The Fourth Amendment marks the first major changes to CPL since 2008. These changes will have a major impact on both prosecution and enforcement. Key amendments include enhanced protection of patent rights, changes in design patent practices, and establishment of an “Open License System” that makes it easier to license granted patents.

This article will focus on the changes in design patent practices. Noticeably, China has become one of the world's largest countries in terms of patent filling, and the number of applications for design patents has grown rapidly in China in the last decade. The Fourth Amendment is regarded by many scholars as a long-anticipated enhancement to design patent protection and prosecution in China.

Changes to the CPL in the area of design patent practices are mainly in the following three aspects.

01. Partial Design Allowed

Under the current Patent Law, a design patent can only protect a complete product, not a portion of a product which cannot be separated or cannot be sold and used independently.

Article 2 of the 2020 amended CPL expands the definition of “Design” as any new design of the shape, the pattern or their combination, or the combination of the color with shape or pattern, of the whole product or a part thereof, which creates an aesthetic feeling and is fit for industrial application, thus making a portion of a product, often referred to as “partial design”, eligible for design patent protection.

Allowance of partial design makes design practice in China more similar to that in many other jurisdictions, such as USA, Europe, and Japan, and offers broader protection of design patents. In this way, distinctive features of a product can be protected independent of the insignificant other features of the product. Without having to limit their design patent to specific complete products, design patent right holders will stand in a better position to protect themselves.

02. Patent term extension for design patents

Article 42 of amended CPL extends the patent term for design patents from 10 years as prescribed in the current patent law to 15 years, which may be considered as an effort to join the Hague Agreement.

This extension allows patentees to enjoy patent right exclusivity for a longer period, increasing the right’s value and reducing the cost and risk of having to file for alternative IP, such as copyright and 3D marks, to prolong the life of the design creation. More importantly, in accordance the Hague Agreement Concerning the International Registration of Industrial Designs, the minimum protection term for design patents is required to be 15 years. This amendment is thus believed to be active preparation for China to join the Hague Agreement.

03 Admitting domestic priority for design applications

Article 29 of amended CPL admits domestic priority for design applications, which is not available under the current patent law. Domestic priority was introduced for the first time for invention and utility model patent applications in the amendment to the CPL in 1992 to be in line with the PCT regulations. Domestic priority is quite useful to add new subject matters, change the type of the applications or revoke applications deemed as being withdrawn. With this new rule, the priority of an earlier domestic design application can also be claimed to by a later design application within six months from the initial filing.

Specifically, if an applicant files an application for a design patent in China, the applicant may file another design application in China for the same subject matter within 6 months from the first filing date and claim priority of the first filing. Under the current domestic priority practice for invention and utility model applications, when domestic priority is claimed, the first filed Chinese application will be deemed to be withdrawn. Therefore, it is not possible to keep both applications alive. It is reasonable to believe that this practice would probably apply to design applications.

To sum up, the revisions made by the Fourth Amendment to the China Patent Law generally show a strong will to strengthen IP protection and promote innovations. How the amended CPL will play out remains to be seen after the Implementation Regulations and the Guidelines for Patent Examination are amended accordingly, but it can be clearly expected that China will become a place of interest in terms of patent application for companies looking to expand in China. As they say, becoming is better than being.