The effect of China’s patent law on partial design applications
Danchen Cheng of Liu Shen & Associates discusses the consequences of China’s amended patent law for partial design patent applications
On June 1 2021, the revised Patent Law of China came into effect, clarifying that the protectable subject matter of design includes the partial design of a product (Article 2, Clause 4). Incorporating partial design into the patent law is a major breakthrough that came in response to rising calls from across the Chinese IP landscape.
Revisions to the Implementing Rules of the Patent Law and the Guidelines for Patent Examination are in the legislative pipeline. Below are the key take-aways for partial design applications based on these revisions, which represent just some of the legislative changes that may happen in the future. Nonetheless, we do not think there will be significant changes.
1. Product name
When applying for a partial design, the claimed part as well as the whole product to which the part belongs shall be specified in the product name, such as ‘door of a vehicle’.
2. Views to be submitted
When applying for a partial design, a view of the whole product shall be submitted, and the claimed part shall be designated by a combination of solid lines and dotted lines, or in other ways, such as by covering the disclaimed parts with a translucent layer of single colour.
The view of the whole product shall not only show clearly the claimed part, but also reveal its position and proportion in the whole product. Where the claimed part contains a stereoscopic shape, the submitted view shall include a perspective view showing the part clearly.
3. Priority claim
According to Article 29 of the Patent Law, the priority claim of a design application can be a foreign priority or a national priority.
The drafted guidelines do not stipulate any special standard for judging ‘the same subject matter’ particular for partial design. Therefore, it can be construed that the feasibility standard for priority claim for integral design shall also apply to partial design.
That is, a later design application can claim priority over the first filing design application, only if the design claimed in the later design application has been shown in the first filing design application, regardless of whether it is the integral design or partial design being claimed in the later design application. In addition, regardless of the original, the later design application can choose to claim either the integral design or the partial design.
4. Graphical User Interface (GUI)
For a GUI that is applicable to any electronic device, it is allowed for an applicant to file only views regarding the GUI itself, without the product. However, the product name in the design application shall include “GUI of electronic equipment”, such as “a navigation GUI for electronic devices”.
When applying for a design patent for a part of the GUI, the product name shall also indicate the claimed part, such as ‘a search bar of a mobile payment GUI of electronic devices’.
5. Voluntary amendments
Changes to the claimed subject matter, which do not go beyond the scope indicated by the initial views, are allowed within two months from the date of filing. However, after the two-month window, the following amendments will not be allowed:
From an integral design to a partial design;
From a partial design to an integral design; and
From a partial design to another partial design.
6. Divisional application
A partial design application cannot be divided from a parent design application claiming integral designs, and vice versa.
7. Validity issues
According to Article 23, Clause 2 of China’s Patent Law, the design for which the patent right is granted shall be significantly different from the prior design or the combination of prior design features.
When determining whether there is a significant difference of a partial design, the shape, pattern and colour of the claimed part, as well as its position and proportion in the product, will be considered, and the principle of overall observation and comprehensive judgement also applies.
For integral design, the points, lines and surfaces randomly picked from the prior design do not belong to the prior design features that can be used for combination. However, for partial design, these parts of the prior design can be regarded as the prior design feature available for combination.
Above are the prospects of some implementation details of partial design under the new patent law. The establishment of the partial design protection system in China is a positive signal that the government is strengthening the protection of design patents. We expect that partial design will begin to play a more active role in, and make increasing contributions to, the design industry.