The principle of priority originates from the Paris Convention for the Protection of Industrial Property (hereinafter referred to as the Paris Convention) signed in 1883. Its purpose is to facilitate nationals of contracting states to apply to other contracting states after filing patent or trademark applications in their own country.

Priority is divided into foreign priority and domestic priority. The Fourth Amendment to Chinese Patent Law added and established the domestic priority system for design patents. This article will introduce the significance of the domestic priority system for design patents.

According to the provisions of Article 29, paragraph 2 of the Chinese Patent Law, Where, for invention or utility model, within twelve months from the date on which the applicant first filed an application in China, or for design, within six months from the date on which the applicant first filed an application in China, he files an application with the patent administration department under the State Council for the same subject matter, the applicant may enjoy the right of priority.

Conditions for enjoying domestic priority

The new Regulations now clarify that it is possible for a later Chinese design patent application to claim priority from an earlier Chinese invention/utility model/design patent application.

Particularly, when an applicant claims domestic priority, the earlier application shall be deemed to have been withdrawn from the date of the subsequent application, except for design patent applicants claiming domestic priority based on an invention or utility model patent application.” (This is mainly because the subsequent design application will not cause a double patenting issue for the prior invention or utility model applications.)

1. Type of the application

type of the prior application(s): invention, utility model, and design patent applications filed in China

type of subsequent application: design patent application in China

Tips: Three situations that cannot be used as the basis for domestic priority:

1. Those who have claimed foreign or domestic priority;
2. Those who have been granted a patent right;
3. Those that pertain to divisional applications filed in accordance with prescribed regulations.

2. Applicant

The applicant of the subsequent application should be the same as the applicant recorded in the earlier application. If they are not the same, the applicant should submit the Certificate of Assignment of Patent Right within three months from the date of filing the subsequent application.

3. Time limit for claiming priority

Within six months from the date of the first filing of a patent application.

4. Subject matter of priority

The design in the subsequent application should be of the same subject as that in the first application and should meet the following two conditions:

1. The design in the prior and subsequent applications belong to the same product.
2. The design in the subsequent application is clearly represented in the design of the first application.

The determination of designs having the same subject matter is the key and core in the verification of the priority. What needs to be emphasized is that designs having the same subject matter do not necessarily mean that the claimed design of the subsequent application must be completely identical with the design as shown in the pictures, photographs or drawings of the first application. If it can be known from the application documents thereof that the claimed design of the subsequent application has been clearly shown in the first application, it can be determined that the claimed design of the subsequent application has the same subject matter as that of the design of the first application, and can enjoy the priority.

Tips: If the first application is an invention or utility model application, a design application with the same subject matter can be filed with the design shown in the drawings of the prior applications.

How to claim domestic priority

1. Submitting a statement

The priority declaration of the subsequent application requires indicating the application date, the application number, and the name of the original receiving office of the prior application on which the priority claim is based.

Tips:

(1) The name of the original receiving office should be China or CN;

(2) The subsequent application does not need to submit a certified copy of the prior document.

2. Payment of Fees

The applicant shall pay the priority claim fee at the same time as the application fee is paid.

Tips: The priority claim fee is charged according to the number of priorities, 80 RMB/each.

Utilization of Domestic Priority

1. Opportunity for Multiple Applications

Scenario 1: Adding similar design(s)

Comment: The prior application contains only one design, while the subsequent application contains two designs, each of which can be protected independently. Thus, the applicant can obtain a broader protection scope. Kindly note that in this case, Design 2 can’t claim priority.

Scenario 2: Overcoming double patenting

For domestic applicants, if the applicant files a design application containing one design (prior application 1) and then files another one or several design applications (prior application 2) similar to the first design, it will probably cause a double patenting issue or constitute conflicting applications because the prior application 1 and the prior application 2 are identical or substantially identical to each other, not complying Article 9 or Article 23 of the Chinese Patent Law.

The applicant can combine the prior application 1 and the prior application 2 into one subsequent application by enjoying the priority right.

By claiming the domestic priority to a design, it is possible to combine several earlier applications into one subsequent application, in such a way as to prevent them from constituting conflicting applications or double patenting, and meanwhile reduce the annuities that need to be paid for the sake of cost saving.

2. Adjustment of the scope of protection of design

Scenario 3: Converting from an overall design to a partial design

Scenario 4: From a partial design to an overall design

Scenario 5: Change from part A into part B of the same product

Tips: The amendments made in scenarios 3-5 can also be accomplished through active modification. Notably, the domestic priority system for designs endows innovative entities with more flexible choices and provides multidimensional and all⁃round protection for design innovations.

It is particularly noteworthy that under the domestic priority system for design patents, the design of the subsequent application can claim a priority to an earlier design application, or an earlier invention or utility model application, and the mutual conversion between an overall design and a partial design can be achieved. In sum, as a procedural safeguard in patent applications, the main function of the domestic priority system is to provide patent applicants with the benefits of the "priority period" similar to foreign priority, the opportunity for multiple applications, and the conversion of the patent type.