Editors note: This article was prepared by Charles C. Liu, PhD, JD, Partner, Director of US Practice, Unitalen Attorneys at Law and Jeanne J. Liu. It was originally published in China Intellectual Property, 20:44-51 (2007) and appears here with the authors’ permission. Unitalen, the largest private IP law firm in China (see website), is a partner in ChinaBio® Accelerator
This is the second of four installments, which are appearing on a weekly basis. In this section, Dr. Liu and Ms. Liu covers the subjects of “Design Patents,”and “Division Applications.” In the next installment, we will present a discussion of “Foreign Filing License and Patent Export Control,””Patent Infringement,” and “Administrative Control.” If you missed it, the first installment is here.
The Chinese patent system has recently experienced tidal waves of change in its statutes and administrative rules. Innovative industries that expect to obtain patent protection in China will continue to be profoundly touched by these waves of change. To stay on top of the changes, it is necessary to discuss certain issues related to the changes in law that are pertinent to global innovative industries and patent practitioners.
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Design patents now account for one-third of Chinese patents, but the quality of many design patents is of much concern. Unlike the two prior revisions, the third revision of the patent law and rules will cast more light on the rule changes for design patents.
The statutory requirements for design patents are likely to be tightened to make it more difficult in many cases for applicants to obtain design patents on their designs. The current patent law requires only that, to be patentable, a design shall not be identical to or similar with any prior design, and, as defined in the Examination Guidelines, the sameness or similarity is judged by ordinary customers, whereas in the Patent Law (Draft Revision 2006), a thin inventiveness requirement is newly added such that, to an ordinary designer in the relevant field, the design shall be substantially distinguishable from any prior design or a combination of the features of a prior design.
On the other hand, the scope of patentable subject matters for design patents is expected to be further restricted so that attention will be shifted more to the design of a product itself rather than the design of the identity of the product, while the subject matter of the latter often overlaps with that of trademarks and copyrights. Based on the patent law draft revision, patterns, colors or a combination of patterns and colors of a plane printed matter that are intended mainly for a product’s identification are no longer patentable.
To determine the scope of protection for a design under the current law, only drawings or photographs of the product in the design application are considered, whereas the description of the design need not be submitted. The draft revision of the patent law provides that applicants have to provide a brief description of the design in the application documents and that a brief description can be used to describe the drawings or photographs. This new clause is obviously helpful to enhance the clarity and certainty of the determination of the scope of protection for the design.
For multiple designs, the new law adopts a more flexible approach. The current law provides that an applicant may file two or more designs in a single application for designs of products that fall in the same class and are sold or used in a set. On top of the above clause, the draft revision for the first time adopts a mechanism for filing a single application that includes multiple similar or related designs of a single product.
While addressing the heightened statutory requirements on design patents, the draft revision also introduces a search report system to enhance the enforceability of design patents. Based on the draft revision, when filing litigation or an administrative action against others, the patentee of a design patent should submit to the court or administrative department a search report produced by the state patent administration.
Previously, an applicant could continuously file divisional patent applications to keep a rejected application in force. Based on the Examination Guidelines (Revised 2006), a sub-divisional application may still be filed based on a divisional application, however, the time limit to file such sub-divisional application will now be governed by the status of the initial application rather than that of the parent patent application. It is indicated that the Chinese government intends to limit the opportunities for filing divisional applications.
Further, it should be noted that the type of the application, either for an invention patent or for a utility model patent, may not be changed with the filing of the divisional or sub-divisional application, i.e., the type of the divisional application must be the same as that of the initial application.