China’s design patent system has undergone significant developments
in recent years. On December 21, 2023, the China State Council unveiled the
Amended Implementing Regulations of the Patent Law of the People’s Republic of
China (the “Amended Implementing Regulations”) which has taken effect on
January 20, 2024. The Amended Implementing Regulations reflects
and clarifies the legislative updates introduced by the 4th amendment to the Patent Law of China and brings in line many aspects of Chinese
patent practices with international standards.
In this article, we summarize the major amendments in the Amended
Implementing Regulations.
Clarifications for Partial Design Patent Applications
The Amended Implementing Regulations now provide guidance on the
representation of partial designs in design patent applications in China. In
particular, the whole product and the part to be protected should be delineated
using a combination of dotted and solid lines. This requirement is aligned with
comparable systems in other major jurisdictions such as the EU, UK and US.
With this development, it is now clear that foreign applicants no
longer have to remove dashed or dotted lines from their design representations
when extending their foreign design applications to China. Moreover, this
change brings about greater certainty regarding the scope of a priority claim
for a foreign application that includes partial designs. This means that both
the partial design and any disclaimed portion of the article in the foreign
application can now be recognized in China in relation to a subsequently filed
Chinese design patent application.
Restoration of Priority within 14 Months from Priority Date and
Correction of Priority Right
Applicants of invention patent or utility model patent application can
request for restoration of priority right within 14 months from the priority
date. In China, any such request for
restoration must be submitted before the China National Intellectual Property
Administration’s (“CNIPA”) issuance of the Notification of Passing Preliminary
Examination, which are usually issued in around 1 to 2 months after filing.
Therefore, the request should be filed as soon as possible.
Further, applicants claiming priority in an invention patent or
utility model patent application, they are able to file request to add or
correct priority claim within 16 months from the priority date or within 4
months from the application date, and before the application is ready for
publication.
Claiming Domestic Priority
Rule 35 of the Amended Implementing Regulations allows applicant to
claim domestic priority of a Chinese invention patent, utility model or design
patent application in a subsequent domestic design patent application. Once the
subsequent application is filed, the prior application will be treated as
withdrawn, unless the prior application is an invention patent or utility model
application. The applicant simply needs to provide the domestic prior
application number and patent number for claiming priority in the latter
application.
Expansion of the No Loss of Novelty Exception
Article 24 of the Chinese Patent Law prescribes a list of events
whereby an invention-creation for which a patent is applied for does not lose
its novelty if such events occurred within 6 months before the date of filing.
Under the Amended Implementing Regulations, the condition for
preserving novelty has been revised to broaden the scope of "academic and
technical conferences" beyond the national level to encompass
"academic or technical conferences organized by international
organizations." Consequently, conferences convened by esteemed
international organizations can now be considered within the purview of
conferences eligible for the 6-month grace period, wherein novelty is not
compromised.
Clarifications for Patent Term Adjustment
Applicants whose invention patent application was granted more than
4 years after the filing date and 3 years after the request for substantive
examination was filed are entitled to apply for adjustment of the patent term
within 3 months from the patent grant date. Under Rule 78 of the Amended
Implementing Regulations, compensation is granted for the extra time taken to
date of grant beyond 4 years from filing date, or beyond 3 years from request
for substantive examination, whichever is shorter, minus number of days of
reasonable delay and the unreasonable delay caused by the applicants themselves.
Reasonable delays may include re-examination procedures, any suspension
procedures etc. On the other hand, unreasonable delays caused by the applicants
include extensions of office actions response deadline, applicant’s request for
delayed examination, etc.
Requests for Deferred Examination
The Amended Implementing Regulations further extend the deferred
examination system to cover utility model (for 1 year) and design applications
(by months up to 36 months). The introduction of the deferred examination
system empowers applicants to make necessary adjustments to claim scope in
alignment with emerging technologies and evolving market dynamics. To allow
more flexibility to the applicants, the Amended Implementing Regulations also include
provisions allowing the withdrawal of the deferred examination request before
the expiration of the delayed period.
Clarifications on International Application filed via Hague
It is now provided under the Amended Implementing Regulations that
the date of the international registration date will be considered as the
application date of the design patent application designating China via Hague Agreement.
The CNIPA will allow 4 months for applicant to make a response to any
Notification of Refusal issued during examination.
Conclusion
The Amended Implementing Regulations brought
about some of the most looked forward to updates in China’s patent system, and
further aligned many aspects of the Chinese Patent system with international practice,
resulting in significant improvements to the patent application procedures. Major
steps have been taken to facilitate applicant to successfully protect their
rights in China through an efficient and fair prosecution procedure. Our firm
regularly assists our clients to prosecute and enforce patent rights in China
mainland, Hong Kong and Asia, please feel free to reach out to our firm if you
have any needs or questions on the matters discussed above.
© Vivien Chan & Co., Newsletter issue 27, February 2024
All Rights Reserved
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