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25 July 2018
Long-known to major trade partners such as the European Union, the United States and Japan to have major discrepancies in terms and protection offered, the fourth amendment of China’s patent law proposes changes to harmonize the country’s design patent regime with laws of other major jurisdictions.
China’s design patent patent regime was once again singled out in the International IP Index released by the US Chamber of Commerce’s Global Innovation Policy Center in February 2018. The report points out that “the standards for determining eligibility for design protection [in China] are considered to be fairly low” and that this coincides with a “growing incidence of design patent trolls and additional costs and uncertainty for multinational technology companies.”
The China IPR SME Helpdesk, a project co-funded by the European Union, also notes differences between the Chinese and EU regimes, comparing the two as shown in table 1.
|
EU Community Design |
Chinese Design Patent |
|
|
Maximum term of protection |
25 years | 10 years |
|
Unregistered design right protection |
3 years | Not protected |
|
Limit on number of designs in one multiple design application |
No limit | Maximum 10 |
|
Novelty requirement |
Novelty with grace period: the design must not be disclosed anywhere in the world before the patent application is filed in order to be considered novel. However, if a company discloses its novel design before it applies for a design patent, it still has 12 months to apply for the registered community design in the EU. |
Absolute novelty: the design must not be disclosed anywhere in the world before the patent application is filed in order to be considered novel. If the design is disclosed anywhere in the world before the design patent application is filed, the design is not patentable. |
|
Limitation on number of views |
Maximum seven views per design |
No statutory limit |
|
Brief description of design |
Optional |
Mandatory |
Other major differences include the fact that China doesn’t perform substantive examination of design patent applications. The State Intellectual Property Office (SIPO) doesn’t search to see if the design is similar or identical to prior art, and detailed search, analysis and evaluation are only conducted when the patentee requests an evaluation report by the patent administration department under the State Council.
Moreover, Chinese design patents currently don’t consider partial design, defining design patents as “pattern, or the combination thereof, or the combination of the colour with shape and pattern, which are rich in an aesthetic appeal and are fit for industrial application.” The current regime doesn’t recognize, for example, dashed lines that signals the designs of shape, pattern and orientation relationship on some part of the product that doesn’t constitute the whole product. Where in the US and Europe a novel portion of a product already protected by an existing design is often filed by only drawing the novel portion in solid lines and the remaining product in dashed lines, Chinese counsel may recommend their clients to create similar designs of the overall product that contain the novel partial feature and file these designs in one patent application. The consideration only for the whole aesthetic of a product has resulted in some interesting copycat products that narrowly escape the law, such as “a car with the front of a BMW and the back of a Rover,” says Sai Chen, manager of the legal department at Linda Liu Partners and an attorneyat-law, by way of example.
But those who lament China’s design pattern may be able to expect good news from the latest amendment to the patent law amendment. “Partial design is expected to be introduced,” says Daniel Sun, patent counsel and attorney-at-law at Chang Tsi & Partners in Beijing. He welcomes the change as it brings China closer to other major jurisdictions.
The amendment has also proposed to extend design patent protection from 10 to 15 years, a term that is in line with the US system, though still short of the EU’s community design protection.
While some may contend that the regime needs greater overhaul, Sun believes China doesn’t necessarily need to introduce substantive evaluation as in the US and Japan, noting that the EU and South Korea are also selective in examination and perform preliminary evaluation for most goods, except in some fast-moving categories like fashion.
“The advantage in China is the speed and simplicity of the application process,” he says, while acknowledging that China and Europe are in different stages of market economy. “European companies typically don’t apply for junk patents and squat on them, because if your patent is challenged and invalidated you’ll end up paying.” To deter misuse of design patents, he suggests China raise the cost of patent invalidation and infringement while keeping the registration process relatively simple.
Another area Chen believes could see more improvement is the guiding rationale in determining the similarity of designs. Having handled many design patent enforcement cases, her overwhelming feeling is that courts often lack a coherent principle: “In the US, the core value of design patent infringement lies in the possibility in causing consumer confusion, and all the criteria ultimately revolves around this. If in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other,” she says.
