Ms. Yingming YUAN, Patent Attorney, Panawell & Partners

 

Since its creation in China in 1984, the Patent Law, going through three amendments though, has been taking overall product designs as the subject matter of design patent protection. Article 2, paragraph four, of the Patent Law as of 2008 stipulates that “designs mean, with respect to a product, new designs of the shape, pattern, or the combination thereof, or the combination of the color with shape and pattern, which are rich in an aesthetic appeal and are fit for industrial application". The Guidelines for Patent Examination as of 2010 also provides that a partial design of a product that cannot be divided or cannot be sold and used separately is not patentable (a case of the subject matter excluded from patentability as design patent). However, with the promulgation of the Patent Law amended in 2020, China has officially included partial designs into patentability, and partial designs have since become subject matter of protection under the Patent Law. At the same time, amendment to the Guidelines for Patent Examination is underway. On August 3, 2021, the Draft Amendments to the Guidelines for Patent Examination 2021 (draft for comments) was released. It is believed that the partial design patent system, to be put in place soon, will further motivate innovations. Following is an overview of the part of amendments made in the draft for comments relating to partial designs.

 

1. Definition of Partial Design

The partial design shall refer to a new design of partial shape, pattern, or the combination thereof, or the combination of the color with shape and pattern, which are rich in an aesthetic appeal and are fit for industrial application. To seek patent protection of an indivisible part of a product, an application is to be filed in relation to the partial design as is the case with "a carved seatback", "an automobile tire tread" and etc.

Circumstances, however, are also specified where the partial design patent should not be granted.

(1) Anything that is not possible to form a relatively divisible independent part in the product or to form a partial design of a relatively complete design unit, for example, the contoured line of a cup handle, or an irregular part of a spectacle lens that is arbitrarily intercepted.

(2) Partial designs for which patent protection is sought are only designs of the pattern or combination of the pattern and color on the surface of a product, such as a pattern on the surface of a motorcycle.

 

2. Name of the Product Incorporating Partial Design

In applying for a partial design patent, the part to be patented and the overall product in which it is a part should be indicated in the name of the product, as is the case with "a car door" and "a cellphone camera".

3. Pictures or Photographs of Partial Designs

Rule 27.2 of the proposed new Implementing Regulations of Patent Law (which has not come into effect yet) stipulates that when applying for a partial design patent, the applicant should submit a view of the whole product and indicate what to be patented in both dashed and solid lines or in any other way.

The view of the whole product should clearly show the product's partial design to be patented and its position and proportion within the product. If the part to be patented includes a three-dimensional shape, the view submitted should include a three-dimensional view that clearly shows the part.

The view to be included in the submitted views should clearly distinguish the part to be patented from the other parts. When the solid and dashed lines are used to indicate the content to be patented, the solid lines show the part to be patented, and the dashed lines the other parts. Other methods can also be used to indicate what to be patented, for example, a translucent layer of a single color is used to cover the parts that are not to be patented. When necessary, dotted lines should be used to indicate the dividing line between the part to be patented and the other parts of the partial design.

It needs be pointed out here that using hatching to show the shape of the design is still not allowed, and the picture shall not have unnecessary lines or marks like center lines and size lines.

 

3. Brief Description of Partial Design

Article 64.2 of the Patent Law stipulates that the scope of protection of the design patent shall be based on the design of the product as shown in the pictures or photographs, and a brief description can be used to explain the design of the product shown in the pictures or photographs.

Under Rule 28 of the current Implementing Regulations of Patent Law, the brief description of a design shall indicate the title and use of the product incorporating the design and the essential feature of the design, and designate a drawing or photograph which best shows the essential feature of the design.

According to the Draft for comment of amended Patent Examination Guidelines, where a partial design patent is applied for, the brief description shall also meet the following requirements:

(1) Where a partial design to be patented is indicated in a method other than the combination of solid and dashed lines, the part to be patented shall be specified in the brief description.

(2) If dotted lines are used to indicate the dividing line between the part to be patented and the other parts, it shall be specified in the brief description if necessary.

(3) When necessary, the use of the partial design to be patented shall be specified and shall correspond to that indicated in the product name.

(4) The designated picture or photograph that best shows the main point of the design should contain the partial design to be patented.

 

4. Requirements on Divisional Applications Relating to Partial Designs

(1) If the parent application is the partial design of a product, it is not allowed to file a divisional application for the whole or any other partial design.

(2) If the parent application relates to the overall design of a product, it is not allowed to file a divisional application for any part of it. For example, if a patent application is filed for the design of a motorcycle, it is not allowed to file a divisional application for the design of a spare part or component of the motorcycle.

 

5. Requirements on Similar Designs

Under the current patent rules, an application for the design patent shall be limited to one design only, but it is allowable to file one application for two or more similar designs of one product.

According to the Draft for comment of amended Patent Examination Guidelines, it is allowable to file one application for two or more partial designs of the same product that are not connected if they are related in terms of function or design and deliver a specific visual effect. For example, the design of two temple bars of a pair of eyeglasses and the design of the four corners on a cellphone.

Under normal circumstances, if overall observation shows that the other designs and basic design have the same or similar design features and the two differ in partial subtle changes, customary design of this type of product, repeated arrangement of design units, and regular changes of the partial design in the overall position and/or proportional relationship of the design, or only changes in color elements, the two are generally considered similar.

 

6. Applicants' Voluntary Amendment

For an applicant's voluntary amendment, the examiner should first check whether the amendment is filed within two months from the application date. For any amendment exceeding two months, if the amendment eliminates the defects in the original application document and renders the application patentable, the amendment will be acceptable. For unacceptable amendment, the examiner should notify the applicant that the amendment is deemed not filed. However, the following amendments are not considered to have eliminated the defects in the original application documents, and a Notification of Amendment Deemed Not to Have Filed shall be issued on the ground that the time limit for voluntary amendment has been two months overdue: (1) amending an overall design into a partial design; (2) amending a partial into an overall design; and (3) amending a partial design in the same overall product into another partial design.

 

7. Amending Defects Pointed out in OAs

Regarding amendments made to defects as pointed out in an Office Action, the examiner should examine whether the amendments exceed the scope shown in the original pictures or photographs and whether the amendments are made in direction to the defects pointed out in the OA. If the amendments filed by the applicant exceed the scope shown in the original pictures or photographs, the examiner should issue an OA to notify the applicant that the amendments are contrary to the provision of Article 33 of the Patent Law. If the applicant's statements or amendments still do not comply with the provision, the examiner may decide to reject the application.

Moreover, if the amendments comply with the provisions of Article 33 of the Patent Law, the defects in the original application documents are eliminated, and would render the application patentable, it is possible for the amendments to be deemed as those made to the defects as pointed out in the OA, and the application documents amended as such should be acceptable.

However, when the following circumstances occur, even if the amendments do not exceed the scope of original pictures or photographs, they shall not be regarded as amendments made to the defects as pointed out in the OA, and they are not acceptable: (1) amending an overall design into a partial design; (2) amending a partial design into an overall design; and (3) amending a partial design in the same overall product into another partial design.

 

With the development of the industry, product designs are becoming more subtle and refined, which makes it more and more difficult to innovate overall designs of mature products. Partial designs then have gradually become an important form of design innovation. For this reason, innovative designers have an increasingly strong demand for patent protection of their partial designs. Therefore, in response to the demands of the innovators, Article 2.4 of the newly amended Patent Law has clearly included partial designs of products into patentability. Starting from June 1, 2021, applicants are allowed to file design patent applications with the CNIPA to seek protection for the parts of their products. As the Implementing Regulations of Patent Law is now still under amendment, starting from June 1, applicants can temporarily file their partial design patent applications in paper or in electronic form offline. The CNIPA will examine the applications once the newly amended Implementing Regulations of Patent Law and the supporting Guidelines for Patent Examination come into effect.

 

 

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