On October 17, 2020, the fourth amendment of the Chinese Patent Law was finally passed and will come into force on June 1, 2021. The main content of this revision is to safeguard the legitimate rights and interests of patentees, enhance the confidence of innovation subjects in patent protection, and fully stimulate the innovation vitality of the entire society. Among them, in order to meet the actual needs of stronger protection of designs, important changes have been made to the design patent-related systems.
1. Introducing partial design protection
1.1 Amended content and interpretation
The definition of design in Article 2, paragraph 4 of the Patent Law is amended as follows: “Design means any new design of the shape, the pattern, or their combination, or the combination of the color with shape or pattern, of the whole or a part of a product, which creates an aesthetic feeling and is fit for industrial application.”
The word "the whole or a part" specifies the protection system for partial designs. The legislative significance mainly lies in:
1) In the practice of design innovation, it is more often to carry out improved design innovation on certain parts of the product, and the design innovation of part of the product has become an important way of product design. This amendment satisfies the need to protect partial innovation points of the product;
2) This amendment effectively curbs the infringer's plagiarism only partially on the design, which is conducive to comprehensive protection of the owner's rights;
3) Major countries and regions such as the United States, Japan, Europe, South Korea all protect partial designs. The protection of partial designs meets the needs of applicants and conforms to international common practices, which can enable enterprises to better utilize rules and further develop the international market to improve international competitiveness.
1.2 Suggestions of application
Partial design is an innovative design for a certain part of the product, such as the mouth of a glass cup, the knob of a microwave oven, etc. Partial design protection is an extension of whole protection, but not any part of any design can be the object of protection for a partial design.
In addition to the elements of the object of overall design protection, the "partial designs" that are included in this time should at least exclude the following two situations:
1) If the design cannot occupy a certain physical space, it cannot constitute a "partial design", such as a non-closed contour line on the product surface;
2) After deleting other parts in the view that are not required to be protected, the "part" that are required to be protected should have relatively complete design features. In addition, as a separable part of a whole product, parts and components can be protected through the whole product design or through partial product design.
(this design cannot be protected as a partial design)
At present, no relevant regulations have been promulgated to regulate issues related to the requirements of partial design application documents and the scope of protection. However, referring to common international practices, China may require applicants to indicate in the request form that the application is a partial design, with "solid and dashed lines " or "clear and blurred" in the drawings or photos, the solid lines or clear part indicate the parts that need protection, while the dashed lines or blurred parts indicate the parts that do not require protection, so as to clearly express the partial designs that need to be protected, and make corresponding explanations in the brief description.
If the applicant intends to directly submit a design patent application for a partial design in April or May next year, or the application requires a priority application for partial design and the 6-month priority period has not yet expired, the applicant may consider submitting the application after the new law takes effect, that is, on or after June 1, 2021.
2. Extending the protection period of design patents to 15 years
2.1 Amended content and interpretation
The protection period design patent in Article 42 of the Patent Law is amended as follows: “The duration of patent right for inventions shall be twenty years, the duration of patent right for utility models shall be ten years, and patent right for designs shall be fifteen years, counted from the date of filing.”
On the one hand, the protection period of Chinese designs is relatively short, while some high-level design products have a relatively longer period, and some classic designs want to be protected for a longer time, so that the public has a longer-term recognition of his product image. This amendment meets the diversified needs of innovation entities for the protection period.
On the other hand, China is also actively considering joining the Hague Agreement on the International Registration of Industrial Designs. The Hague Agreement is a very good channel for entities to apply abroad. The Hague Agreement stipulates that the minimum period of protection for designs is 15 years. The adjustment of the protection period is also to create conditions for joining the Hague Agreement.
2.2 Suggestions of application
It is still unclear what conditions are met for a design patent that can enjoy a 15-year term of protection. For example, is the filing date or priority date on or after June 1, 2020? Or is the date of announcement of grant of patent on or after June 1, 2020?
If it is the former condition, the applicant can use priority system to submit a new application on or after June 1, 2020; if it is the latter condition, the applicant can claim domestic priority to re-submit the application or pay the certificate fee later to make the date of announcement of grant of patent on or after June 1, 2020.
3. Accepting domestic priority claims
3.1 Amended content and interpretation
The domestic priority system in Article 29, paragraph 2 of the Patent Law is amended as follows: “Where, within twelve months from the date on which any applicant first filed in China an application for a patent for invention or utility model, or within six months from the date on which any applicant first filed in China an application for a patent for design, he or it files with the patent administration department under the State Council an application for a patent for the same subject matter, he or it may enjoy a right of priority.”
After the introduction of the domestic priority system for design patent application, the applicant can submit a design patent application again within the six-month priority period after filing a design patent application and enjoy the priority of the earlier application. This gives applicants an opportunity to further improve and perfect the design.
3.2 Suggestions of application
Based on the existing priority system, if you first submit a design patent application for the basic design, and then submit an application later for an improved design, if the improved design is a relatively minor change, the latter application will not be authorized because the two applications belong to the same invention-creation.
After the domestic priority system for design patent application is introduced, the applicant can submit a patent application immediately after the basic design is made to obtain an earlier filing date, then complete the improved design within 6 months after submitting the basic design, and claim the priority of the basic design to make both the basic design and the improved design can be protected by patent rights.
Summary: There are still many related issues in the specific implementation of this amendment, such as the determination of the scope of protection, the principle of infringement comparison, etc., they are not yet clear, we still need to wait for the answers to be found in the implementation rules, guidelines of patent examination or judicial interpretations of the patent law that will be issued in the future in line with the new patent law. But what is certain is that this amendment to the Patent Law will improve Chinese design protection system, broaden the scope of design protection, greatly enhance design innovation protection, and create a business environment that more respects innovation.
2021-04-28
Borsam IP
粤公网安备 44030902003456号
BORSAM IP———————————————