The Fourth Revised Chinese Patent Law will come into effect on June 1, 2021. Recently, the CNIPA released the Interim Measures for the Processing of Related Examination Regarding the Implementation of the Revised Patent Law. The Measures will also come into effect on June 1, 2021.
Regarding the Chinese design filings, the Measures provide the following regulations:
1. A partial design application may be filed from June 1, 2021 according to Article 2.4 of the Revised Chinese Patent Law, while the examination thereof will be initiated after the release of the Revised Rules for the Implementation of the Patent Law;
2. Domestic priority claim is allowable for a design application filed on or after June 1, 2021 according to Article 29.2 of the Revised Chinese Patent Law, and the examination thereof together with the examination of the domestic priority will be initiated after the release of the Revised Rules for the Implementation of the Patent Law; and
3. For any design application filed on or after June 1, 2021, the duration of protection will be 15 years counting from the filing date according to Article 42.1 of the Revised Chinese Patent Law. Meanwhile, for any design application filed before June 1, 2021, the duration of protection remains at 10 years.
The revised Patent Law and the Measures will likely influence most clients' design protection strategy in China to a greater extent. For seeking better protection, Kangxin would like to share the following advice:
1. For a Chinese design application which has been filed based on a foreign priority, if the 6 month priority term is not terminated on June 1, 2021 and the design application has also not been granted, a second filing may be considered so as to obtain an extended duration of protection of 15 years, and at the same time, the first filing may be withdrawn or abandoned.
2. For a Chinese design application without priority claim that has been filed on or after December 1, 2021, if the design application has not been granted, a second filing may be considered by claiming the domestic priority of the first Chinese filing, so as to obtain an extended duration of protection of 15 years. In this way, the first filing will be automatically deemed as being withdrawn at the same time.
3. Since the CNIPA has not issued the revised Rules for the Implementation of the Patent Law, the formality requirements and examination criteria on partial design are still uncertain. In our opinion, for a partial design, the preparation of the filing documents, especially the drawings and the description, may refer to the regulations of other countries. Solid lines may be used for the claimed part(s) while broken lines may be used for the unclaimed part(s). In addition, it is advisable that sufficient views (at least one perspective view together with six side views) are filed so as to clearly show both the claimed and unclaimed parts clearly.
Partial design protection, domestic priority claim and extended protection duration contribute to a robust Chinese design patent protection system and will bring great benefit to clients all over the world.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.