CHANG TSI
Insights
On May 5, 2022, the Hague Agreement Concerning the International Registration of Industrial Designs (1999 Act) (hereinafter referred to as the “Hague Agreement”) officially became effective in China. China's accession to the Hague system will facilitate its proactive integration into the global design system. However, as the Hague system is still a new field to most of us, there are inevitably many questions. This article introduces the practice and procedure of international design applications designating China in a Q&A format.
Q1: What should be noted when filing the DM/1 form for an international design application designating China?
Answer: In addition to the mandatory content, an international design application designating China also needs to include a brief description; if the application contains multiple designs, a basic design must be specified; if priority is claimed, a declaration claiming priority must be completed; if it involves an exception to lack of novelty, a declaration claiming the exception to lack of novelty should be submitted.
Q2: Is it mandatory to entrust a Chinese patent agency for the international design application designating China?
Answer: According to the law, foreign individuals, foreign enterprises, or other foreign organizations that do not have a habitual residence or place of business in China must entrust a patent agency established in China if they need to respond to notifications or carry out legal procedures before the State Intellectual Property Office (SIPO). It is unnecessary for them to entrust a patent agency to submit copies of prior application documents or to pay fees.
Q3: What are the requirements for the brief description in an international design application designating China?
Answer: The international design application designating China must include a brief description that describes the characteristic features of the industrial design (key points of the design) for which the applicant seeks protection.
Q4: What are the requirements for unity in an international design application designating China?
Answer: An international design application designating China should comply with the provisions of Article 31, Paragraph 2 of the Chinese Patent Law, which stipulates that an application for a design patent shall be limited to one design. Two or more similar designs for the same product or two or more designs for products of the same kind that are sold or used in sets may be filed as one application.
Q5: How to file divisional applications for an application that does not meet the unity requirement?
Answer: The applicant may file a divisional application with the SIPO within two (2) months from the international publication date. If the applicant files a divisional application according to the examination opinions, it should be done at the latest within two (2) months from the domestic publication date of the original application. After the expiration of the aforementioned periods, or if the original application has been rejected, or if the original application is deemed to have been withdrawn and the rights have not been restored, a divisional application generally may not be filed.
Q6: What are the requirements for the views in an international design application designating China?
Answer: In addition to meeting the formality examination requirements of the International Bureau, an international design application designating China should also comply with the declaration made by China under Article 9(3)(a) of the Hague Agreement, namely, for three-dimensional products or products whose design features are solely in the graphical user interface, views that meet the regulations should be submitted.
Q7: What are the specific requirements for claiming priority?
Answer: An applicant who files an application through the Hague system within six (6) months from the date of the first patent application for the same industrial design and designates China can enjoy priority without the need to pay a fee for claiming priority. Suppose a copy of the priority application documents is not submitted when filing an international design application, in that case, the applicant must submit the documents to the SIPO within 3 months from the date of international publication. If the applicant fails to submit a copy of the prior application documents or relevant certificates within the period, it will be considered that priority has not been claimed. If an international application for an industrial design is deemed not to have claimed priority, such priority cannot be restored.
Q8: How is priority claimed?
Answer: To claim priority, the applicant needs to fill in the relevant priority information in the DM/1 form when submitting the international design application designating China. Any priority request made after submitting the international registration application will be deemed as having not been made.
Q9: What are the specific ways to submit copies of priority documents and related files?
Answer: The applicant can submit through one of the following three methods:
1. Provide the DAS code at the time of filing;
2. Submit Form V annexed to the DM/1 form along with related documents at the time of application;
3. Submit directly to the SIPO within three (3) months as of the date of international publication.
If the applicant recorded in the copy of the prior application document is inconsistent with the applicant of the subsequent application, the applicant needs to submit relevant proof of the assignment for patent within the aforementioned period.
Q10: What is the time limit for the SIPO to issue a Decision to Grant a Design Patent/Notification of Refusal?
Answer: The SIPO must issue a Decision to Grant a Design Patent or a Notification of Refusal within 12 months from the date of international publication.
Q11: What are the main circumstances for issuing a Notification of Refusal? How should an applicant respond to a Notification of Refusal?
Answer: The main deficiencies include not meeting the unity requirement, not clearly showing the industrial design of the product for which protection is sought, or the brief description not being standardized, etc.
The applicant must submit a response to the SIPO within the period specified in the Notification of Refusal, which is generally 4 months. When responding, the applicant should state the national application number and present opinions in Chinese, while any amendments to the application documents should be in English.
Q12: How to determine if an international design application is protected in China?
After examination, if no reason for rejection is found, the SIPO will make a decision to grant a patent right for the design and issue a "Decision to Grant a Design Patent" to the International Bureau, and carry out a domestic publication. The International Bureau sends a copy of the "Decision to Grant a Design Patent" to the applicant and publishes it in the International Designs Bulletin. The granted patent right takes effect from the date recorded in the "Decision to Grant a Design Patent," which is the date of the domestic publication. After the publication, the applicant may request the SIPO to issue a copy of the patent registration of the international design application as proof of protection in China.
Q13: For the international design application designating China, how to make a change in ownership?
Answer: To make a change in ownership of an international design application, the changes should be registered directly with the International Bureau. For cases designating China, in addition to dealing with the relevant procedures with the International Bureau, the party concerned must also submit certifying documents to the SIPO in accordance with the provisions of the Implementing Regulations of the Patent Law. If the certifying documents are in a foreign language, a Chinese translation of the abstract should also be provided. If the certifying documents are not submitted or unqualified upon examination, the SIPO will notify the International Bureau that the change of ownership is ineffective in China. Subsequently, the party concerned may continue to submit certifying documents for change of ownership to the SIPO. Once the documents are considered qualified upon examination, the SIPO will notify the International Bureau, and the International Bureau will declare the change of ownership effective in China.
