A Quick Dive Into the Upcoming Changes to Chinese Design Patent Law
Protecting the Product 05/25/21 Gregory R. Churney, Nicholas P. Schmidbauer, Justin D. DeAngelis
On October 17, 2020, the Chinese Legislature passed the Fourth Amendment to the Chinese Patent Law, which will come into effect on June 1, 2021. As discussed in our previous post, the Fourth Amendment included several updates that help move Chinese Design Patent Law toward harmonization with the laws of most major markets. As June 1st quickly approaches, the article below highlights and expands upon some of the major updates coming to Chinese Design Patent Law.
For many years, partial claiming, i.e., claiming only a portion of an article of manufacture or product, has been highly limited in China. Unlike the U.S. and many other jurisdictions, Applicants have been largely limited to filing design applications on an entire product instead of just a “portion” of that product. For example, in the Graphical User Interface (“GUI”) space, it is common in the U.S. and many other jurisdictions to include the claimed subject matter, e.g., text, objects, or icons appearing on a display screen, in solid lines and the unclaimed subject matter, e.g., the electronic device, in dashed lines. In contrast, China has typically required that the entire product or article of manufacture, including the electronic device, be shown in all solid lines, which has the impact of significantly narrowing the scope of the claim.
An example of these differences can be seen below for two family counterparts with two substantially different claims. As illustrated in the table below, the U.S. patent implements partial claiming strategies to broaden the claim, while the Chinese patent is limited to claiming the entire article of manufacture (even Walter White and Jesse Pinkman). As such, many Applicants have foregone filing GUI design applications (and other partial claim designs) in China since the obtainable claims are narrow and the scope of protection may not be commercially worthwhile. In contrast, GUI design filings and other types of IP protection for software can be robust, as discussed in this prior post.
Although there has been very little guidance provided by the China National Intellectual Property Administration (CNIPA) regarding the recent Chinese design law amendments, as of June 1, 2021, partial claiming in Chinese design applications will be allowed. As such, if still within the six-month priority timeframe, Applicants should consider waiting to file in China until at least June 1, 2021, to take full advantage of partial claiming. While it is assumed that broken lines will now be accepted by the CNIPA, this has yet to be confirmed. Once the specific requirements for partial design claiming in China are made public, we will update our readership.
Increased Duration of Design Patent Protection
The Fourth Amendment to the Chinese Patent Law has also increased the term of a design patent in China from 10 years to 15 years from the date of filing. This revision to the law appears to be a stepping-stone for China to sign on to the Hague System for the International Registration of Industrial Designs, which requires at least a 15-year patent term. Given this substantial term increase, Applicants should consider holding off on filing in China until June 1, 2021, if still within the six month priority timeframe, in order to receive a 5 year boost to their design patent term.
Ability to Claim Priority to Prior-Filed Chinese Design Patent Applications
Starting June 1, 2021, Applicants will also have the ability to claim priority to a prior-filed Chinese design patent application filed less than six months prior. This could be useful for many reasons, including for Applicants whose product design has been slightly altered after the original Chinese filing. The second application, filed within 6 months of the original Chinese filing, may change the scope of the claimed subject matter and still claim priority to the original Chinese filing, as long as no new matter has been added.
While yet to be confirmed, it may be beneficial to leverage this domestic priority rule to take advantage of the new Chinese Design Patent rules starting June 1, 2021. For example, if an Applicant filed a Chinese design patent application within 6 months of June 1, 2021, the Applicant may be able to file another design application in China that claims priority to the previously filed application, includes a partial design claim, and receives a 15-year patent term. Thus, in addition to receiving an extra five years of patent protection, the Applicant may be able to convert a portion of the new design to broken lines and still claim priority to the earlier filed design application. If this strategy is confirmed by CNIPA, Applicants should consider reviewing any Chinese design applications filed within the previous 6 months to determine whether any could benefit from a partial design claim.
To that end, the Fourth Amendment to the Chinese Patent Law will have a major impact on Chinese Design Patents and strategies for design filings in China on or after June 1 of this year. These upcoming changes will help align Chinese Design Patent Law with the laws of much of the rest of the world and should accelerate China’s accession to the Hague System.
The Quarles & Brady design rights legal team is nationally-recognized for its extensive knowledge and practice experience in this complex and important field. For questions about this article or on how to incorporate design-related legal rights into your intellectual property portfolio, please contact the author(s) of this post directly or send a message to the team via our Contact page.