CHANG TSI
Insights
Article 31 paragraph 2 of the Chinese Patent Law reads "An application for a patent for design shall be limited to one design. Two or more similar designs of the same product or two or more designs which are incorporated in products belonging to the same class and being sold or used in set, may be filed as one application."
In China, there are three scenarios where the applicant can put a plurality of designs (up to 10 designs) into one application as follows, and the plurality of designs contained in an application shall at least belong to the same main class.
Assembled Product
An Assembled product refers to a single product consisting of several components. However, a design application of an assembled product could not protect each component independently.
Take an electronic kettle assembly as an example, it comprises two components, i.e., a kettle and a heating base. If we file the kettle and the heating base in one application as an assembled product, the competitors who produce the kettle or the heating base would not fall into the protection scope of the filed application.
Given the very limited protection scope, we generally do not recommend filing design applications as assembled products just for cost-saving purposes.
Products in Set
Products in set mean that two or more products belong to the same main class, but are independent of each other. Moreover, two or more products could be customarily sold or used at the same time, and the designs of these two or more products have the same concept. The whole design of the set as well as the independent design of each product are all within the scope of protection.
Take a coffee set as an example, it consists of a coffee cup, a coffee pot, a milk pot, and a sugar pot. If we file the coffee cup, the coffee pot, the milk pot, and the sugar pot in one application as “products in set,” we could seek to protect the coffee cup, the coffee pot, the milk pot, and the sugar pot independently, and also protect the coffee set as a whole.
Kindly note that a design patent application of “products in set” shall not include similar designs of one or more products of the set of products. Put differently, similar designs of the same product shall not be mixed with the designs of “products in set.”
Similar Designs for the Same Product
Similar designs for the same product could be filed in one application on the condition that they are related to the same product and the differences therebetween are subtle. Generally, the applicant may file a single application containing multiple designs for the same product. If the Examiner holds that the designs are not similar to each other during prosecution, the applicant may delete one or more of them and file the deleted one(s) as one or more divisional applications.
Bearing in mind that similar designs shall belong to the same product, and the number of similar designs in a multiple application should not exceed 10.
Notably, the newly introduced “domestic priority claiming” rules for design patents can be combined with the mechanism of multiple design application filing, providing the applicants of design patents with the benefits of flexibility and cost-saving.
For instance, in case the applicant has filed several design applications for the same product for the first time in China, which are similar to each other but were initially not filed as a multiple application, by claiming the priority of these filed design applications, the applicant would be able to combine these similar designs into a subsequent “multiple” application.
