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How to file a Subsequent Design Application in China When the First Foreign Application is for Partial Design
Wang Xue
Chinese Patent Attorney
Linda Liu & Partners
Unlike the situation in Japan, the U.S. and Europe, partial design is not protected in China. Both the applicant and the patent attorney are most concerned about or confused with the question of how to file a subsequent design application in China to enjoy priority and obtain a scope of protection as large as possible when the first foreign application is for partial design. This article makes a brief analysis and explanation over this issue, and I welcome your precious comments.
How to modify the drawings or photographs of the partial design in the first foreign application so that they can be used in a subsequent design application in China to enjoy priority and obtain an expected, reasonable scope of protection? In fact, the focus of this question is the determination of the same subject matter for designs. The SIPO’s Guidelines for Patent Examination prescribes the determination of the same subject matter for designs as below:
“The determination of the same subject matter for designs shall be based on the design application subsequently filed in China and the content indicated in the first foreign design application. Designs of the same subject matter shall meet both of the following two conditions:
(1) both of the designs are for the same product; and
(2) the claimed design in the subsequent application in China is clearly shown in the first foreign application.
When the drawings or photographs of the claimed design in the subsequent application in China are not completely consistent with those of the first foreign application, or the subsequent application in China contains a brief explanation while the first foreign application does not have the related brief explanation, but based on the application documents of the two, the claimed design in the subsequent application in China has been clearly shown in the first foreign application, it may be determined that the claimed design in the subsequent application in China has the same subject matter as that of the design in the first foreign application, and thus may enjoy the priority of the latter.”
The following are two examples.
Case 1
As shown in Fig. 1, the first foreign application claims partial design for a handle, wherein the dotted lines show a cabinet. When filing a subsequent design application in China claiming the priority of the first foreign application, the applicant may change the dotted lines into solid lines to file a design application for a cabinet. Alternatively, the applicant can delete the cabinet and only retain the handle to file a design application for a handle. Since both the two modified designs are clearly shown in the first foreign application, they can enjoy the priority of the first foreign application. Compared with the design application for a cabinet by changing the dotted lines into solid lines, the design application for a handle by deleting the dotted lines can obtain a larger scope of protection.
Case 2
As shown in Fig. 2, the subsequent application in China deleted the two round holes indicated by dotted lines as well as the border lines between the dotted-line portion and the solid-line portion from the first foreign application, and changed all the remaining dotted lines into solid lines.
Fig. 2
Currently, the examiners for preliminary examination also allow the modifications as shown in Fig. 2. With regard to such modifications, the examiners for preliminary examination normally acknowledge that the shape of the modified design in the subsequent application has been shown in the design of the first foreign application and that the subsequent application can enjoy the priority of the first foreign application. Further, if the views submitted upon filing of the subsequent application are the same as those of the first foreign application, the applicant may also make the modifications as shown in Fig. 2 in subsequent procedures, and such modifications will not be considered as going beyond the scope of the original application. However, at present, there is no such case happening in the invalidation procedure.
As shown above, when filing a subsequent design application in China claiming the priority of the first foreign application for partial design, the applicant can make the following changes—changing all the dotted lines into solid lines to file a design application for the entire product; or deleting all the dotted lines if the solid-line portion also qualifies as a product for filing a design application; or modifying the dotted-line portion in a limited manner. If the modified designs meet the unity requirement, the applicant may also incorporate two or more designs in the same application. This is especially beneficial for the applicant who files a subsequent design application in China claiming the priority of the first foreign application for partial design.
The above is my view about how to file a subsequent design application in China claiming the priority of the first foreign application for partial design. I hope that this article is helpful for you and we can have further discussions about this issue in the future.
