Entering the 2020s, China’s intellectual property practices, especially design patents, have greatly changed. In particular, the partial designs got allowed under the Fourth Amendment to Patent Law effective on June 1, 2021 and China joined the Hague System on May 5, 2022. Following that, the Chinese Patent Office issued two Notices with a bunch of interim provisions, guiding on how these “newly-introduced” designs would be examined.

1. A partial design generally shall be represented in solid lines in combination with broken lines; if not represented in this way, the applicant shall specify the claimed part in the brief description. 

It seems that the Chinese Patent Office prefers partial designs represented in solid lines in combination with broken lines. Although the drawings represented in other ways may be accepted if we specify the claimed part in the brief description, the Chinese Patent Office does not give any further details on what kind of representations would be allowed. Before further official rules in this regard are issued, to avoid a problematic issue with the drawings during prosecution, we think it would be more advisable to file a partial design with the claimed part in solid lines and the unclaimed part in broken lines, if possible.

2. Where the claimed part of a partial design contains a 3-dimensional shape, a perspective view showing this part clearly shall be submitted. 

Under the current practice of China, the 6-side views in accordance with orthographic projection are required for a design of a 3-dimensional product. In some cases, a view can be omitted if it is generally invisible during use; or if the two views are identical or symmetrical, one of them can be omitted (The Examiners are getting rather strict with the view omission and we generally would not suggest doing so). We would always recommend having at least one perspective view to show the 3-dimensional product clearly, although it is not mandatory. From the updated Notice, we can see that a perspective view becomes mandatory if the claimed part of a partial design contains a 3-dimensional shape. Even, multiple perspective views would be recommended to show the claimed part clearly if its 3-dimensional shape is somewhat abstract.

3. A design application may claim a domestic priority based on the drawings of an earlier patent application. If the earlier domestic application is a design, this priority design application is deemed withdrawn upon the filing of the later design application.   

The domestic priority for designs just follows how it works for inventions and utility models in China. That is, the priority design application will be automatically deemed withdrawn on the filing date of the later design application. The good thing for applicants here is, nevertheless, if the drawings of an earlier invention or utility model application show the design, we may have a later design application claiming the priority of the earlier application without the loss of the invention or utility model. In practice, the applicants sometimes would recognize infringement within the 6-month priority claiming deadline after filing an invention application. This domestic priority policy for design helps get an enforceable design patent right soon without losing the opportunity to have the invention granted at a later stage.

4. Where a design is filed via the Hague system with China as one of the designated countries and has got an international registration date, this international registration date should be deemed as the filing date under Article 28 of Chinese Patent Law.

Article 28 of Chinese Patent Law stipulates that the date on which the patent application documents are received by the Chinese Patent Office shall be the filing date. Under this interim provision, the international registration date of a Hague design with the designation of China is equivalent to the filing date of this design in China. Unlike the 1-year grace period in many jurisdictions, China adopts quasi-absolute novelty criteria for design patents. A design applied before the Chinese Patent Office should be “NEW,” which means it should not be used or published anywhere in the world. The exceptions for not losing its novelty are strictly limited to, within 6 months before the filing date, (1) it is disclosed to the public for the first time in the public interest when a state of emergency or any extraordinary circumstance occurs in the country; (2) where it was first exhibited at an international exhibition sponsored or recognized by the Chinese Government; (3) where it was first made public at a prescribed academic or technological meeting (should be organized and held by a department of the State Council or by a national academic association); (4) where it was disclosed by any person without the consent of the applicant. In practice, however, we barely have cases entitled with such a 6-month grace period and would always recommend filing the design application before any kind of disclosure anywhere. Therefore, if the applicant wishes to have a Hague design with the designation of China, filing the Hague design before the disclosure is highly suggested.

5. If the international design application documents published by the World Intellectual Property Organization (WIPO) contain a description indicating the design features of the design, then such a description is deemed as the brief description as required. 

Many jurisdictions require a description for a design, generally, specifying the drawings in detail. In contrast, a brief description for a Chinese design application typically is required to include the title, the use of the product, design feature(s) of the product, the representative figure, etc. The design features refer to the three protective elements for a design patent, i.e., shape, pattern, and color. Under China’s practice, the basic protective element for a design patent is the shape, pattern, or combination thereof. In addition, the color can be also protected as part of the protection scope if the color is claimed in the brief description. Given this, to avoid a refusal due to a non-conforming description, it would be highly recommended to specify the design features in the description when filing your Hague design with the designation of China. 

6. For an international design application, in response to a refusal issued by the Chinese Patent Office, the applicant shall file the observations in Chinese and the amended application documents in English (if any). 

In general, all the domestic application documents submitted to the Chinese Patent Office shall be in Chinese. Concerning a Hague design with the designation of China, it would be fine to have the application documents in English for prosecution by the Chinese Patent Office. However, if the applicant would like to present observations in response to the refusal issued by the Chinese Patent Office Action, the observations shall be in Chinese.

7. As for an international design application, the Chinese Patent Office does not charge a priority claiming fee.

For a conventional design application, the Chinese Patent Office charges a USD 15 official fee per priority claim at the time of filing. For a Hague design with the designation of China, however, the applicants do not need to worry about payment of further official fees besides the three-part official fees (basic fee, publication fee, and designation fee) after filing. 

8. For an international design application, the applicant may file a divisional application before the Chinese Patent Office within 2 months after the international publication date. If the applicant files a divisional application according to an Office Action, this divisional application shall be filed within 2 months after the domestic publication date of the initial application. If the above deadlines are passed, the initial application is rejected, or the initial application is deemed as being withdrawn and not restored, a divisional application generally shall NOT be filed.

For an initial design application conventionally filed before the Chinese Patent Office, we may file a divisional application when the initial application is pending; and, if an Office Action is issued raising the unity rejection for that divisional application, we may file a further divisional application while that divisional application is pending. It seems that the rules for divisional application filing based on an international design application are very different from those based on a conventional one. Compared to a conventional design, if no unity rejection is raised for an international design application, the applicants literally have very limited time to consider divisional filing. Thus, if the applicant wishes to have more time to make a decision regarding divisional filing, a conventional design application would be a better option.

9. Where an invalidation petition is initiated for an international design patent, if the patentee has no domicile in mainland China, the invalidation documents may be delivered by mailing, fax, email, public announcement, etc. In the case of public announcement, the documents are deemed delivered upon one-month expiration from the announcement date. 

Under China’s patent invalidation practice, the patentee only has one month (plus a 15-day mailing period) to submit the written response upon the delivery of the invalidation petition and amendments if any. Further, the invalidation proceeding would still continue even if the patentee does not submit the written response or attend the oral hearing. So, it is important for the patentees to receive the invalidation documents safely and timely and they generally would have an agency to insure it. Unlike the design filing via the traditional Paris Convention route, when a foreign entity without domicile in mainland China files an international design application via the Hague System, however, entrustment to an agency in China is not mandatory even if China is designated. Thus, if a Hague design with the designation of China gets granted without receiving any refusal and the patentee has no domicile in mainland China, the Chinese Patent Office would probably have no agency information record for it and transfer the invalidation documents in the manners stipulated in this provision. In such a case, to avoid any problems caused by the failure to timely receive the invalidation documents, besides frequently checking the Email address submitted in the DM/1 Form, the applicants may consider having an agency in China handle the Hague design filing or at least periodically monitor the public announcement.