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Introduction to the Amendment to the Guidelines for Patent Examination in China—Design
Xue WANG
Chinese Patent Attorney
Mechanical Engineering Department
Linda Liu & Partners
On September 23, 2019, the China National Intellectual Property Administration (hereinafter referred to as “CNIPA”) issued Announcement No.328, announcing the amendment to the Guidelines for Patent Examination (hereinafter referred to as “the Guidelines”) which became effective as of November 1, 2019. The amendment relating to design mainly involves the applications of graphical user interface and the introduction of deferred examination system. In order to make it easier for Chinese and foreign applicants to better understand the amendment to design in the Guidelines, our firm briefly summarizes the amendment and makes a brief comparison with the practice before the amendment.
1.With regard to graphical user interface
Amendment
Clarification on the differences before and after amendment
About the product name
The main purpose of the graphical user interface and the products to which it is applied shall be indicated, generally with keywords containing "graphic user interface", e.g. “a refrigerator with a temperature-controlled graphical user interface" and "a display screen panel with a video-on-demand graphical user interface". The general term "graphical user interface" should not be used as the product name, such as "software graphical user interface" and "operating graphical user interface".
It was not required to indicate the main purpose in the product name before the amendment, but after the amendment, the main purpose is explicitly required.
In addition, the amendment expands the carrier to "display screen panel".
The product name of the dynamic graphical user interface must have the keyword of "dynamic", such as "weather forecast dynamic graphical user interface of mobile phone".
Prior to the amendment, the word "dynamic" was not required in the product name, but after the amendment, the word "dynamic" must be included in the product name.
About the submission of views
The views to be submitted after the amendment are substantially the same as those before the amendment.
Since the carrier can be expanded to "display screen panel", it is not compulsory to submit an orthographic view of the involved side for an application with the subject matter of "display screen panel". If the size, position and proportional relationship need to be especially indicated, then it is suggested to submit the above-mentioned orthographic view.
If the graphical user interface is a dynamic pattern, the applicant should submit an orthographic view of the side involving the graphical user interface in at least one state as the front view; as for the remaining states, only the views of the key frames of the graphical user interface could be submitted as the views of state of variation. The views submitted should be able to unambiguously determine the complete change process of the animation in the dynamic pattern. The views of state of variation should be labeled by following the order of the dynamic change process.
Substantially the same as the provision before the amendment.
For a graphical user interface used to operate a projector, in addition to the views of the graphical user interface, at least one view that clearly shows the projector should also be submitted.
Substantially the same as the provision before the amendment.
About the brief explanation
The purpose of the graphical user interface shall be clearly stated in the brief explanation for a design of a product containing a graphical user interface and shall be corresponding to the purpose embodied in the product name.
Substantially the same as the provision before the amendment.
If only the orthographic view of the display screen panel containing the graphical user interface is submitted, the list of final products to which the display screen panel containing the graphical user interface applies should be exhaustive, for example, "the display screen panel is used for mobile phones and computers."
If the key point of a design lies only in the graphical user interface, at least one orthographic view of the display screen panel containing the graphical user interface should be submitted.
If the size, position, and proportion of the graphical user interface design need to be clearly displayed in the final product, an orthographic view of the side of final product containing the graphical user interface needs to be submitted.
If necessary, the applicant should point out the area of the product where the graphical user interface is located, the way of human-computer interaction and the process of change.
Substantially the same as the provision before the amendment.
Summary
For the graphical user interface, the biggest change lies in that the main purpose should be indicated in the name and that the “display screen panel” can serve as a carrier, meaning that the carrier is no longer limited to final products such as mobile phones and computers.
As for indicating the main purpose in the product name, the product name can be written as, for example, "graphic user interface of mobile phone" as it was not required to indicate the main purpose in the product name before the amendment. But after the amendment, for instance, the interface with map navigation should be written as "graphical user interface for map navigation of mobile phone" or "display screen panel with map navigation graphic user interface".
The "display screen panel" can be used as a carrier, so that the purpose of protecting the same interface applicable to different products in one application can be achieved.
But before November 1, 2019, the applicant had to submit multiple applications for different carriers or choose a terminal product as a carrier to submit one application. In the absence of a partial design system, the scope of protection of design patent right will be limited by the terminal product which serves as the carrier of the graphical user interface. Therefore, the design patent of the graphical user interface will encounter many difficulties in enforcement of right. For instance, though the interfaces are the same or similar, infringement may not be constituted because the product accused of infringement is different from the terminal product incorporating the patented design of the graphical user interface.
After the amendment, the "display screen panel" now can serve as a carrier, which is expected to solve the problem that it is difficult to exercise design patent of graphical user interface due to the limitation of the category of the terminal products. Whether the amendment to the Guidelines could achieve the desired effect or not needs to be proved by future judicial cases.
2. With regard to deferred examination
The applicant may file a request for deferred examination of applications for patent for invention and design. The request for deferred examination of an application for patent for design shall be submitted by the applicant at the same time when he/she submits the application. The deferral period is 1 year, 2 years, or 3 years from the date when the request for deferred examination becomes effective.
When the deferral period expires, the application will be examined in order. When necessary, the Patent Office may initiate the examination procedure and notify the applicant that the applicant’s requested deferral period is expired.
Summary
In China, applications for patent for design are usually granted and published within 4-6 months from the filing date. However since many patented products will not be put into production immediately after completing the design or their production cycle is long, the applicant does not want to disclose it early to expose the design to the public before the product is launched.
Therefore, in order to defer the publishing time as long as possible, usually the applicant can only properly delay the granting time by creating formal defects. However, after the introduction of the deferred examination system in China, applicants can choose a deferral period of 1, 2, or 3 years according to the actual situation to meet the different needs of different products.
However it is noteworthy that the deferred examination request cannot be revoked once filed. Therefore, the applicant needs to choose an appropriate deferral period according to the specific circumstances on the filing date. For example, if publication is not desired within at least 2 years, it is recommended to choose 2 years as the deferral period. Adding up with the normal examination cycle, generally it takes about 2 and half years for the application to be granted and published.
In addition, with regard to "when necessary, the Patent Office may initiate the examination procedure", "when necessary" generally refers to the case where a patent application has an impact on national interests or public interests. In such case, the patent administration of the State Council would terminate the deferral at its discretion and bring the application to the normal examination procedure. But since“design" means any new design of the shape, the pattern or their combination, and the combination of the color with shape or pattern, of a product, which creates an aesthetic feeling and is fit for industrial application, usually an application for patent for design will not have an impact on national interests or public interests. Therefore, generally speaking, an application for patent for design does not have the above concern.
The amendment concerning the provisions of design in the Guidelines is beneficial to the applicant, conveying the message that CNIPA follows the development trend in the field of the design of the graphical user interface and fully considers the importance of the deferred examination system to the applicants, and revealing CNIPA’s attitude of strengthening the protection of the rights and interests of applicants from the examination level.
