Following the Fourth Amendment to Patent Law became effective on June 1, 2021, the partial design gets allowed in China. At the very beginning of 2023, the Chinese Patent Office issued a bunch of interim provisions, guiding on how the Fourth Amendment would be enforced, among which only the following two provisions are related to how a partial design should be examined:

i. 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.

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

Besides these, however, the Chinese Patent Office did not issue any official rules in detail on how partial designs would be examined to date. Currently, Chinese lawmakers are still working on the Draft Guideline for Patent Examination and Draft Implementation Regulations of Patent Law, but the Examiners have started examination on partial designs filed as of June 1, 2021 and issued Office Actions for them. From the Office Actions we received and communication with the Examiners recently, the following issues and recommendations for partial design filings are provided.

1. The title for partial designs shall specify the name and the claimed part of the product.

For instance, if the claimed part is the handle of a cup, then the title “cup” would not be acceptable and the Examiner would require to amend it to read “handle of cup.” Sometimes, it is hard to give a specific name for the claimed part, for example, the design for a desk just excludes the protection of the screws represented in dotted lines. In that case, the title “main body of desk” would be fine.

2. Surface shadings are still not allowed for partial designs.

The drawings for a Chinese design application could be in the form of line drawings, rendered drawings, or photographs. Before the Fourth Amendment, line drawings cannot contain surface shadings. For the partial designs that get allowed under the Fourth Amendment, surface shadings on either the claimed part or the unclaimed part are still not acceptable.

3. A design for the whole product and a design claiming a part of that product might not be allowed to be put in a single application.

Under China’s practice, a single design application may include up to 10 similar designs that are related to the same product and the differences therebetween are subtle. Some Examiners contend that a design for the whole product and a design claiming a part of that product cannot be put in such a single application as similar designs. In contrast, some other Examiners hold that this should not be mandatory and shall depend on whether the claimed parts in the two designs look similar. Given this, the cost-effective way would be to file such designs in a single application first and divide them into separate applications if the Examiner deems them dissimilar. 

4. The claimed part shall form a relatively complete design unit or separate area.

The Draft of the Patent Examination Guidelines stipulates that the claimed design shall form a relatively complete design unit or separate area. Although this Draft has not been passed yet, for such a formality issue, the Applicant may simply make a slight amendment to the drawings, i.e., amend the broken lines that connect the solid lines into solid lines so that the solid lines form a relatively complete design unit or separate area, so as to move the application forward for allowance shortly.

5. A design with just a pattern or a combination of pattern and color on the surface of a product is not eligible.

The Draft of the Patent Examination Guidelines also stipulates that the claimed design shall NOT be a pattern or a combination of the pattern and color on a surface of a product, such as the patterns on the surface of a motor. We have seen a couple of cases receiving Office Actions with this issue raised, however, the aforesaid Draft is not passed yet and the Examiners in charge just cannot give any other effective legal basis in this regard.

Considering the current situation, for such an eligibility matter, the Applicant may try to argue with the Examiner in terms of the following aspects:

a. The Examiner fails to provide the legal basis for this Rejection. In particular, although the Draft of the Patent Examination Guidelines (hereinafter referred to as “the Draft”) stipulates that the claimed design shall NOT be a pattern or a combination of the pattern and color on a surface of a product, such as the patterns on the surface of a motor, it has not been passed yet. That is to say, the Draft is not an effective law now. However, the legal basis shall be an effective law, rather than a Draft that has not been passed. Applying such a Draft, in this case, would violate the principle of nonretroactivity.

b. According to the current Patent Examination Guidelines (Section 7.2, Chapter 3, Part I), the combinations that may constitute a design include the shape of a product; the pattern of a product; the shape and pattern of a product; the shape and color of a product; the pattern and color of a product; the shape, pattern, and color of a product. In other words, the currently effective laws and regulations do recognize the pattern of a product and the pattern and color of a product as design patentable.

6. The Fourth Amendment does not apply to a divisional application filed after June 1, 2021 with its parent application filed before that date.

Although the Fourth Amendment became effective on June 1, 2021, applying to the applications filed on and after that date, things might be different if it is a divisional application. If the parent application was filed before June 1, 2021, the divisional application cannot claim partial design protection even if it is filed on or after that date.

With the above being said, many Examiners indicate that the examination standards for partial designs are indeed not certain at this stage and might be changed based on the Applicants’ feedback. In view of this uncertainty, it would be advisable to try to communicate with the Examiner in charge for every case to discuss the most viable response strategy and convey our comments and suggestions to the officials.