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
About Us
Vivien Chan & Co. is a full-service law practice with offices in Hong Kong (1985) and Beijing (1993). We are consistently recognized as a premier law firm for and in Greater China. With over 35 years of doing business in Greater China, our Hong Kong and China teams have an in-depth understanding and knowledge of the legal culture and market dynamics.
Our long established licensed law offices in Greater China have allowed us to develop deep local roots and an integrated global perspective necessary to help domestic businesses and multinational companies alike seamlessly manage even the most complex local and cross border transactions.
We have advised on some of the most significant acquisitions, arbitrations, real estate projects and intellectual property enforcement to date. This is particularly evident from our leading position in areas such as intellectual property, tax, employment, mergers & acquisitions and dispute resolution. Our ability to collaborate across practices and borders with ease allows us to bring the right team to every transaction, regardless of location.
