Many countries around the world, especially some developing countries, have been paying growing attention to the protection of intellectual property. Against this backdrop, designs have drawn much more attention, and design regimes have gradually improved. A deeper understanding of leading design regimes is necessary in order to gain a competitive advantage in this area, and careful study of differences between China and the United States is of great importance for Chinese and foreign applicants.
Differences: China and the United States
China and the United States have no separate design laws and both countries incorporate design legislation into their patent laws. However, due to great differences in their legal systems, judicial concepts and historic backgrounds, there are many differences in their design regimes. China stipulates design provisions in its Patent Law, Rules on Implementation of the Patent Law and the Guidelines for Patent Examination, while US designs are governed by US patent laws, as well as patent rules and patent examination guidance. US provisions on design protection are contained in its patent laws (US Code Chapter 16, Designs; Section 171 of US Code – Patents for Designs; Section 172 of US Code – Right of Priority; and, Section 173 of US Code – Term of Design Patent). In addition, there are some other provisions in US patent laws that apply to the protection of design patents, such as the provisions on patent application and examination procedures, and provisions on identification of infringement.
Extent of design protection
Article 2 of China's Patent Law provides that "a design refers to a new design of a product's shape, pattern or the combination thereof, or the combination of its colour and shape and/or pattern, that is aesthetically pleasing and industrial applicable", while Section 171 of the US Code – Patent for Designs provides that "whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefore, subject to the conditions and requirements of this title".
The definition of a design in Chinese and US laws focus on the product, but they differ in their interpretations of what a product consists of. A product involved in a design as referred to in Article 2 of China's Patent Law means an indivisible and integral product, of which each integral part cannot be sold or used solely; despite the use of word product in the legal provisions, Section 171 of US Code only provides that "any new, original and ornamental design" shall be considered a product, but does not provide that the design must be an integral product. Therefore, what a design in the United States protects is an ornamental design for an article of manufacture instead of the product itself.
From the above, we can conclude that the differences between China and the United States in the protection of design are as follows: the United States allows the application of partial design, which, if protected, will necessarily extend to some specific and integral products. In China, a design proposed in an application and subsequently legally protected is only applied to one single product as a whole. In other words, partial design in the United States may be used on several specific integral products instead of one specific integral product to which the partial design is attached. By contrast, the scope of protection in China for a design is only limited to the designated product to which the design in question is attached such that whether or not the essential part of design in question may be applied to some other products is not considered. If the owner wants the design to be protected on other products, the owner is required to file a separate application for each of the intended products.
Similar to the US partial design provisions, Japan, Germany, European Union and South Korea also protect partial design of products and articles.
China's Patent Office conducts only preliminary examination of design applications. Article 40 of China's Patent Law provides that "where it is found after preliminary examination that there is no cause for rejection of the application for a patent for a utility model or design, the Patent Office shall grant the patent right for a utility model or the patent right for a design, issue the relevant patent certificate, and register and announce it, and the patent right for the utility model or design will take effect from the date of the announcement".
According to paragraph 3 of Article 44 of the Rules for the Implementation of Patent Law, the scope of preliminary examination for design applications includes: "whether or not an application for a patent for a design obviously falls under the situations as specified in Article 5, or paragraph 1.6 of Article 25 of the Patent Law, or is not in conformity with the provisions of Article 18 or paragraph 1 of Article 19 of the Patent Law, or the provisions of Article 16, Article 27 or Article 28 of the Rules, or is obviously not in conformity with the provisions of paragraph 4 of Article 2, paragraph 1 of Article 23, paragraph 2 of Article 27, paragraph 2 of Article 31, Article 33 of the Patent Law, or paragraph 1 of Article 43 of the Rules, or is not entitled to a patent right according to the provisions of Article 9 of the Patent Law".
Design patent rights are always granted much faster than those for inventions because design applications are not subject to substantive examination. In the current patent examination practice, a design patent will be generally granted within one year from filing the application.
Paragraph 2 of Section 171 of US Code provides that "the provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided". Meanwhile, Section 1.151 of US Patent Rules provides that "the rules relating to applications for patents for other inventions or discoveries are also applicable to applications for patents for designs except as otherwise provided". Similar provisions can also be found in US patent examination guidelines. Therefore, some provisions in US patent laws, patent rules and patent examination guidelines are also applicable to design patents, such as provisions on novelty, patent application and examination procedures, and finding of infringement.
As substantive examination of design applications is required in the United States, the grant is slower than that in China but faster than the grant for inventions in the United States. Most design patents are granted within two years.
While US applicants for design patents may ask the United States Patent and Trademark Office (USPTO) to expedite the examination process, China's patent laws provide nothing on the expedition of examination in respect of design applications (this is also a difference compared with the US examination process for designs). However, before the USPTO expedites the examination, the applicant must conduct a pre-examination search and pay the relevant fees for the expedited examination (See Section 1.155 of US Patent Rules for details). The expedition of the examination process in United States may shorten the grant cycle for design applications, but in general, the examination cycle is still longer than that in China.
In sum, the substantial difference between the United States and China in respect of the examination of design patent applications is that design patents in the United States are subject to substantial examination, while in China they go only through preliminary examination procedures. Therefore, design patents in the United States are better than those in China in terms of quality and reliability, but China's designs are subject to a shorter examination cycle.
Article 27 of China's Patent Law provides that "when a patent application is filed for a design, relevant documents shall be submitted, including a request, drawings or photographs of the design and a brief explanation of the design". Article 28 of the Rules for the Implementation of the Patent Law specifies the scope of content required in the brief explanation: "the brief explanation of a design shall indicate the name and purpose of the design product, and the design essentials for the use of the design, and provide a picture or photograph of the design that can demonstrate the design essentials to the greatest extent. The brief explanation shall also specify anything relating to omission of the view of the design or colours for which protection is sought". As substantive examination is not required in China, a submission of drawings or photographs or other forms of presentation that are allowed (such as renderings) can satisfy the form requirements, provided that no drawing contains any essential parts that cannot be authorised, such as lines that show shadow or effect in specific cases. Unlike in the United States, where the part that constitutes no design essentials can be shown in broken lines, applicants in China are required to change the part shown in broken lines into that shown in full lines (by combining the original part in broken lines with the part in full lines). This is because China has not exercised the system for the protection of partial designs. Therefore, a design in China is protected as an integral design of a product.
As design patent applications in the United States must be subject to substantive examination, the application documents always contain the concept of claim and description. In the description, each view and their mutual relationship are described.
Meanwhile, US requirements for drawings or photographs submitted in design patent applications are stricter than those of China. For example, it often requires a submission of stereo line drawings, which contain lines that show shadow and effect in most cases. Otherwise, if the photographs submitted fail to satisfy the conditions for the grant, the difficulty in responding to the examination opinions in the substantive examination will increase accordingly, and more examination opinions will be issued. The part shown in broken lines in attached drawings is the part that is not required to be protected (the generally known part of the product). The application document usually contains a statement that "the portions of the drawings shown in broken lines form no part of the claimed design". This is also a reflection of the US protection of partial design.
Partial Designs and Priority Documents
As specified above, China currently processes partial designs by changing any part shown in broken lines into part shown in full lines (that is, merging the original part shown in broken lines into the essential part of the product for protection). However, the merger of the part shown in broken lines into the part in full lines will result in inconsistency between the design application document and the priority document and a subsequent change in the theme subject of the application. Such a change may lead examiners at China's State Intellectual Property Office (SIPO) to deny the priority of partial design and create a host of issues, for example, the part shown in broken lines may be beyond the originally recorded scope and must be deleted. If so, the design becomes partial design, which is not protected under China's patent laws. In such cases, a foreign applicant will be forced to choose a waiver of its priority when filing a design application in China. In this sense, under the unified constraint of the Paris Convention, the principle of independence of patents as observed in various countries has created a series of problems in the specific implementation, the resolution of which are subject to further studies. Therefore, we speculate that examination standards of various countries will gradually converge under the unified constraints of various international treaties.
Other noticeable differences
The design patent regimes in China and the United States differ in several other aspects. Below are just two examples.
The two countries differ in how the principle of consistency with the provisions for invention patents is observed. In the United States, design patent applications can be filed by the designer of a design only; while clause 4.1.3 in Chapter 3, Part 1 of China's Guidelines for Patent Examination provides that "in the event of service invention, the right to apply for the patent shall belong to the employer; in the event of non-service invention, the right to apply for the patent shall belong to the inventor".
Article 42 in Chapter 5 of China's Patent Law provides that "the duration of a patent right for inventions shall be twenty years, and the duration of a patent right for utility models and a patent right for designs shall be ten years, counted from the date of filing". In addition, annual fees shall be paid from the year of grant until the expiry of the duration of the patent. US patent laws provide that "patents for designs shall be granted for the term of fourteen years from the date of grant". Such a provision indicates that design patents are not subject to the provisions related to the extension of the duration of patents for inventions in the United States, and there is no need to pay annual fees after the expiry of the duration.
A convergence of protection
Globally, design patent and protection regimes exhibit strong regional features. However, as the global economy develops, product circulation improves and the protection of design patents enhances product competitiveness. However, due to different legislations in various countries, companies encounter many problems in their rights protection. We believe that as a result of global integration, coordination and constraints of various international treaties, design patent regimes of various countries, including China and the United States, will develop jointly and converge.
|Gary G Wu|
Gary qualified as a patent attorney in 1991. After joining Kangxin Partners in 2000, he completed training on European and German patent law at Vossius & Partner in Germany. He has successfully handled a large number of patent applications for both foreign and domestic clients.
As a senior patent attorney, Gary is highly experienced in patent prosecution, invalidation, and due diligence in a wide range of technical fields, including mechanical engineering, medical devices, automobile industry, audio systems, digital technology, and home appliances. Gary also advises clients on managing their patent portfolios.