On October 17, 2020, the Standing Committee of the 13^th National People’s Congress in China promulgated in its 22th session the fourth amended “Patent Law of the People’s Republic of China”. The Amended Patent Law will come into effect on June 1, 2021. Involving many substantial changes and having many new highlights, this amendment will bring China's patent system to a new level. This article will make a brief introduction to the impact of the amendment on the application and enforcement of design patents.

 

According to the current Chinese patent law, designs of portions of a product (also known as "partial designs") do not belong to the subject matters of design patent protection. In other words, the current Chinese patent law only protects the design of an overall product, and does not allow the applicant to apply patent protection for partial designs of a product. Accordingly, the current practice does not permit the inclusion of broken lines in the six views (front, rear, left, right, top, and bottom views) and perspective views of the design patents (note: broken lines are allowed in the reference views). This provision prevents applicants from protecting partial innovation in products, making the current protection system different from those in the world's major countries and regions such as the US, Japan, South Korea and the EU. The protection of partial designs is allowed in the countries and regions where the IP5 offices (USPTO, JPO, EPO, KIPO and CNIPA) are located, with the exception of China. Hence applicants from these countries/regions often must modify their views (by removing the broken lines or replacing them with solid lines) when they send the drawings of their design applications to China for filing.

This amendment addresses the above issues. According to Article 2 of the amended Patent Law, "design means any new design of the shape, pattern, or the combination thereof, or the combination of the color with shape and pattern, of the whole or a part of a product, which creates an aesthetic feeling and is fit for industrial application." This provision allows designs of portions of a product to become the eligible subject matters of protection of a design patent, so that the applicants can apply design patent protection for partial innovation of the product. This is a major breakthrough in China's design patent system. Since then, China will be in line with the world on the subject matters of a design patent protection, which will not only greatly facilitates the application process for foreign applicants, but also, more importantly, allows the applicants to highlight their precise contribution to the existing designs in their partial designs and hence obtain more reasonable protection. The acceptance of partial designs would provide applicants with greater freedom than the existing mechanism whose protection is limited to the product as a whole.

As for the application practice how to represent partial design in the drawings of the design patent, it is to be further specified in the “the Implementation Regulations of the Patent Law of the People's Republic of China” and the “Guidelines for Patent Examination.“ Expectedly, it should be largely based on the provisions of other countries and regions as well. For example, the applicantshould use the broken lines (or in other ways) to show the disclaimed parts of the design, and use the solid lines to show the claimed parts.

According to Article 29 of the current Patent Law, the applicants of invention patents or utility model patents are entitled to claim foreign priority and domestic priority according to the law while for design patent applications, the applicant can only claim foreign priority. In other words, domestic applicants are not allowed to claim the priority of their prior design applications, which is obviously unfair.

This amendment introduces a domestic priority system for design patent applications, whereby domestic applicants can also enjoy the same priority as foreign applicants for their earlier design patent applications. According to Article 29, Paragraph 2, of the amended Patents Law, “……or within six months from the date of filing the first patent application for a design in China, the applicant files with the Patent Administration Department of the State Council an application for a patent for the same subject, he or it may enjoy a right of priority.” This provision will make it easier for domestic applicants to retain the earlier filing dates by claiming priority when, for any reason, they intend to abandon their earlier design patent applications and re-file new ones on the same subject matters as long as within six months of priority period.

According to the current Patent Law, the term of design patents is 10 years, counting from the date of application while according to Article 42 of the amended Patent Law, "the term of design patent is 15 years". This amendment is to be in line with the international standards so as to prepare for China's joining to the “Hague Agreement Concerning the International Registration of Industrial Designs” in the future.

This provision also means that, with the implementation of the new Patent Law, the life cycle of a design patent lasts longer, and the design patents can be protected for up to 15 years from the date of filing as long as patentees continue to pay the annual fees, which allows patentees more time to enforce their patent rights, license others for implementation and gain more revenues.

As design patent applications do not undergo substantive examination, the people’s court or the local IP office generally require the patentees to present a patent evaluation report as an evidence for proving the stability of their patent rights during the enforcement of the rights of patents after the patents are granted.Under the current Patent Law and Guidelines for Patent Examination, the people’s court or the local IP office may require the patentee or the interested parties (i.e., the person who has the right of action, such as the licensee of exclusive exploitation license and the licensee of general license contract of patent exploitation who has a right of action granted by patentee) to present a patent evaluation report prepared by the China National Intellectual Property Administration ("CNIPA"; formerly known as the State Intellectual Property Office, "SIPO", of the P.R.C.).

However, according to Article 66 of the amended Patent Law, "patent rights holder or interested party or the accused infringer can also take the initiative to present a patent evaluation report." This provision means that the accused infringer, just like the patentee and the interested party, can also take the initiative to present a patent evaluation report prepared by the CNIPA to the people’s court or the local IP office, making the patent evaluation report system more procedurally complete and neutral. This amendment makes the system and procedure to be even fairer to the accused infringer by providing an additional channel for confronting with the patentee.

As far as the law is concerned, it is not clear in the case that the patentee or interested party does not file a request of patent evaluation report with the CNIPA, whether the accused infringer can, on its own initiative, request a patent evaluation report prepared by the CNIPA (the current rule only allows the patentee or an interested party to request the preceding evaluation report while others may copy the said report after it is rendered by the CNIPA.) Nevertheless, in response to the foregoing amendments, we believe that the “Implementation Regulations of the Patent Law of the People's Republic of China” and the “Guidelines for Patent Examination“ will provide supporting measures so that the accused infringer can also request the CNIPA to prepare the patent evaluation report for the patent in question and the specific method of request.

It is expected that, upon the implementation of the new Patent Law, the CNIPA will receive more requests for patent evaluation reports of design patents.