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Linda LIU
Xue WANG
Chinese Patent Attorney
Linda Liu & Partners

From April 8 to April 9, 2013, Linda was invited to Alicante, a beautiful Spanish city, to participate in the celebration of the 10th anniversary of the establishment of the European Community’s design system. The celebration invited specialists from all over the world to give speeches on topics concerning design. As a guest speaker from China, Linda delivered a speech introducing some characteristics of the design application in China and some noticeable issues for the applicant. The speech analyzed several questions. For example, how to file an application in China for a partial design which is accepted by Europe, the US and Japan? Can a component invisible when being used, which is excluded from patent protection in Europe, obtain patent protection in China? How to guarantee that the filed views can clearly indicate the design of the product for which patent protection is sought under the China design system? How to file one application for two or more similar designs of the same product instead of filing of separate applications for respective designs so as to avoid double patenting and invalidation of some designs?
 
In China, the importance of design patents is self-evident. However, in fact, a large number of foreign clients in China still have not made good use of design patents which can acquire strong protection. In contrast, Chinese enterprises attach much importance to design applications. During the last two years, Chinese enterprises filed about 600,000 design applications annually. Moreover, the design patent is deemed by those in IP industry as a patent capable of enforcing the right easily and attaining a ruling quickly yet well protecting the truly valid right. The patent owners should notice the importance of design applications in China before it is too late. We sincerely hope that this article will prompt the foreign clients to think whether their products can acquire protection in China and whether they should exercise their rights by means of design patents.
 
Lastly, we would like to again give congratulations on the 10th anniversary of the establishment of the European Community’s design system, and we would like to extend our warmest thanks to the sponsor. In addition, if the readers have any questions about the issues mentioned in this article or about other matters concerning the design, please contact us.
  
I. What product can obtain design protection in China?
 
Pursuant to Article 2.4 of the Chinese Patent Law, “Design” means any new design of the shape, the pattern, or their combination, or the combination of the color with shape or pattern, of a product, which creates an aesthetic feeling and is fit for industrial application. In this definition, the main factors for limiting the subject matters eligible for design application are: (1) the design must be incorporated in a product; (2) the design can be fit for industrial application, i.e., the design can be mass-produced in the industrial way.
 
A product refers to an article produced by using an industrial method and having an independent value in use. The pure artistic, calligraphic or photographic works, the handicrafts, farm products or natural goods that cannot be repeatedly produced, the inseparable parts of the product (such as the brim of a hat, the heel of a sock, and the handle of a cup) that cannot be sold or used separately, and the patterns (such as the software interface, the pattern on the screen of the mobile phone, and the animated image) shown when the product is electrified are not subject matters eligible for design protection in China.
 
Moreover, the three elements that constitute the design, shape, pattern and color, must be reflected on the surface of the product and are visually observable by human. These elements should also be fixed and visible. For example, the sand painting cannot be a subject matter eligible for design protection. Furthermore, the color of the product alone cannot constitute a design.
 
Pursuant to Article 5.1 of the Chinese Patent Law, no patent right shall be granted for any invention-creation that is contrary to the laws or social morality or that is detrimental to public interest.


 

Here are some examples. “Bed sheet containing the pattern of RMB” violates the Bank Law. “Tattoo machine with a horrible appearance” has a shape showing murder, violence or horror and is contrary to social morality. In addition, “Package containing the pattern of the national flag” uses the pattern of the national flag and is detrimental to public interest. Thus, these examples are excluded from design protection.
 
Pursuant to Article 25.6 of the Chinese Patent Law, no patent right shall be granted for designs of two-dimensional printing goods, made of the pattern, the color or the combination of the two, which serve mainly as indicators.
 

 
For example, the signboard (that is, “Countrywide Engineering Building Materials Brand”) is obviously a signboard related to a product and belongs to two-dimensional printing goods which serve mainly as indicators, thereby being unable to obtain design protection. In contrast, the “printing paper” on the right mainly plays the role of decoration instead of indicator, and thus can obtain design protection.
 
The determination of whether a product is eligible for design protection in China should be made in accordance with Article 2.4, Article 5.1 and Article 25.6 of the Chinese Patent Law.
  
II. Basic requirements on the views of design applications in China
 
1. Number of the views
 
The views of a typical design application include six-side views + a perspective view. Pursuant to the SIPO’s Guidelines for Patent Examination, “For a product with a three-dimensional design, if the essential features of the design of the product involve six sides, the applicant shall submit orthographic projection views of six sides; if the essential features of the design of the product involve one side or several sides only, the applicant shall submit at least the orthographic projection view and the perspective view of the side concerned. For a product with a plane design, if the essential features of the design of the product involve one side only, the applicant may submit the orthographic projection view of the relevant side only; if the essential features of the design of the product involve two sides, the applicant shall submit the orthographic projection views of the two relevant sides.”
 
In particular, for a product with a three-dimensional design, no matter whether the product is complex or simple, the above condition must be satisfied. If some components still cannot be clearly shown by such views, a partially enlarged view, a sectional view or a perspective view in another direction may be added.
 
2. Form of the views
 
The submitted views may be line drawings, rendering drawings (CG drawings) and photographs, but the following issues should be noted: (1) the views in one application can be made in multiple manners, but six-side views of the same design should be made in the same manner with the same proportion; (2) for line drawings, only solid lines can be used to show the appearance of the product, and it is not allowed to use dotted lines, dot-dash lines, rendering lines, size lines and so on; (3) for rendering drawings or photographs, the background should be plain, and the product and the background shall have appropriate distinction in brightness, i.e., when the rendering drawings or photographs turn black-and-white, it is possible to distinguish the product from the background; (4) the exploded view, sectional view, enlarged view, view of the state of variation, and reference view can be also submitted, and the number of such views is not limited.
 
3. A brief explanation shall be included in a design application
 
Article 27 of the current Chinese Patent Law adds the provision that a brief explanation shall be submitted when a design application is filed, and Article 59 of the Chinese Patent Law adds the provision that “the brief explanation may be used to interpret the design of the product as shown in the drawings or photographs”. These provisions specify the legal status of the brief explanation.
 
Besides, pursuant to Rule 28 of the Implementing Regulations of the Chinese Patent Law, the brief explanation shall indicate the title and the use of the product incorporating the design, the essential features of the design, and designate a drawing or photograph capable of best showing the essential features of the design; where a view of the product incorporating the design is omitted or where concurrent protection for color is claimed, it shall be indicated in the brief explanation. Especially, when entrusting a design application to a patent agency, it is suggested that the applicant elaborate the use of the product and the essential features of the design so that the patent attorney can draft the brief explanation more accurately.
 
III. Noticeable issues for foreign applicants to file design applications in China
 
1. How to guarantee clear indication by the views
 
Pursuant to Article 27.2 of the Chinese Patent Law, the relevant drawings or photographs submitted by the applicant shall clearly indicate the design of the product for which patent protection is sought. However, in practice, there are still some applications whose views cannot clear indicate the design. Here are some examples.
 
Example 1: Balustrade
 

The balustrade is a product with a three-dimensional design. If only this drawing is submitted, the balustrade cannot obtain design protection in China. Moreover, this drawing shows other products besides the balustrade, so its background is not plain and it cannot clearly indicate the design.
 
Example 2: Idle Pulley


 

This example only has six-side views. The front view and the rear view show that the center has a plurality of concentric circle parts, but the specific structure of these parts cannot be unambiguously determined only from the other views. Therefore, the submitted six-side views still cannot clearly indicate the design, and the applicant needs to add a perspective view or a sectional view.
 
2. How to guarantee priority
 
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 the following two conditions:
 
(1) Both designs are for the same product;
 
(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 may enjoy the priority of the latter. Here are some common situations:
 
①When the earlier application is for partial design
 
When the earlier application is for partial design, it is possible to file a subsequent Chinese application for the whole design by changing all the dotted lines into solid ones so that the subsequent Chinese application can still enjoy the priority. Please see the following Example 3.
 
Example 3: Shaver

 
②When the earlier application protects a product with a three-dimensional design but only has one perspective view
 
When the earlier application only has one perspective view, it is not allowed to file a subsequent design application in China by submitting only one perspective view. At this time, the applicant can add one orthographic projection view of the side that has been clearly indicated in the perspective view, as the front view. That is to say, at this time, the applicant should submit the originally filed perspective view and the newly prepared front view so that the subsequent Chinese application can still enjoy the priority. Please see the following Example 4.

Example 4: Packaging Box

 
③When the views of the earlier application contain those lines that are disallowed in China, such as rendering lines
 
In some countries like the USA, rendering lines are needed in design applications to indicate the depressions and protrusions on the surface of the product, but the rendering lines are disallowed in China. It is suggested to directly delete these lines, and after the deletion, the subsequent Chinese application can still enjoy the priority.
 
④If the subsequent Chinese application does not have completely the same document as the priority document but includes almost the same design as the priority document, i.e., if the design claimed by the subsequent Chinese application is clearly indicated in the priority document, this design is deemed as relating to the same subject matter and can enjoy the priority.

Example 5: Mobile Phone

 
In Example 5, the subsequent application deletes the rendering lines and deletes the design in the slot. Although the drawings of the two applications are not completely the same, they indicate almost the same design. The design claimed in the subsequent application has been clearly shown in the corresponding priority document and is a design relating to the same subject matter, so the subsequent application can enjoy the priority.

Example 6: Mobile Phone



The two designs are obviously different designs. The design claimed in the subsequent application is not clearly shown in the corresponding earlier application, and is not a design relating to the same subject matter, so the subsequent application cannot enjoy the priority.
 
3. Designs united in one application
 
Pursuant to Article 31.2 of the Chinese Patent Law, an application for a patent for design shall be limited to one design; two or more similar designs for the same product or two or more designs which are incorporated in products belonging to the same class and sold or used in sets may be filed as one application (hereinafter referred to as “designs united in one application”). When the designs united in one application are approved, each design can separately enjoy its right.
 
(1) Similar designs
 
Similar designs should meet the following four conditions:
 
①Relating to the same product;
②The main design is designated;
 
③The other designs are similar to the main design;
 
④The number of similar designs in one design application shall not exceed ten; in addition, it is suggested to unite possibly similar designs in one application so as to prevent the problem of “double patenting” that might be caused by filing separate applications for respective designs and to save costs for the applicant.
 
 
 
 
Example 7: Packaging Bag


 

In the above example, the four packaging bags have completely the same imaging composition, and only differ in the colors and in the patterns that represent different fragrances in the lower right corner, so they are similar designs and can be united in one application as similar designs.

Example 8: Packaging Container

 
In the above example, the packaging containers can be united in one application as similar designs because they have completely the same shape and only differ in the color.
 
In China, if the color needs to be protected, it is necessary to submit the drawing having the corresponding color and make a statement in the brief explanation. In Example 8, if there is no statement indicating that the designs seeking to protect the color, then the four designs are regarded as identical designs and cannot be united in one application. Therefore, the brief explanation should assert that the designs of at least three bottles seek to protect the color.
 
(2) Products in set
 
Products in set should satisfy the following conditions:
 
①The products incorporating two or more designs belong to the same class in the International Classification for Industrial Designs;
 
②The products have the same design concept;
 
③The products are sold or used in set.
 
“Being sold or used at the same time” usually means that the products are customarily sold or used at the same time and have collective value of use.
 
Example 9: Combination Sofa


 
Generally speaking, the sofa and the tea table are products sold or used in set. However, under the old Chinese Patent Law, the tea table and the sofa do not belong to the same sub-class, so it is only possible to unite the one-seat sofa, two-seat sofa and the three-seat sofa in one application as products in set. The current Chinese Patent Law extends the classification to “the same class”, and thus the tea table and the sofa can be united in one application as products in set.
 
In addition, the current Chinese Patent Law extends the classification from “the same sub-class” to “the same class”. At present, bed + bedside table, table + chair, sofa + tea table, hat + coat + trousers and spoon + tray can be regarded as products in set.
 
4. How to file design applications for components of a product
 
A product incorporating a design usually consists of a plurality of components. For example, a vehicle comprises a door, a light, a steering wheel, front and rear bumpers, a hood, an engine, an engine piston, and so on. In order to comprehensively protect the design of the vehicle, besides an application for the entire vehicle, applications for the above components are usually filed.
 
As long as the components of a product satisfy the definition of the design in the Chinese Patent Law and are corresponding to the classes or subclasses in the International Classification for Industrial Designs under the Locarno Agreement and can be sold as accessories, they are usually eligible for patent protection.

Example 10: Engine Piston



Example 11: Engine Filter



In Examples 10-11, both the engine piston and the engine filter are components of the engine and are invisible when being used. Such components cannot obtain design protection at the OHIM but can obtain design protection in China. The applicant should also pay attention to this issue.
 

（2013）