Chinese partial design application practices under new rules and examination guidelines

On June 1 2021, the fourth revised Patent Law of the People’s Republic of China officially came into force, incorporating partial designs into the statutory protected objects of design patents. This institutional adjustment not only fills the gap in the protection of partial design patents in China but also provides innovative entities with a more refined path for intellectual property protection.

This article outlines typical cases in combination with the Chinese patent laws, new rules and regulations, examination guidelines, and examination practices.

Paragraph 2 of Article 30 of the Rules for the Implementation of the Patent Law clearly stipulates that where an application for a partial design patent is filed, views of the entire product shall be submitted, and the content of the part to be protected shall be indicated by a combination of dashed and solid lines or other means.

The carrier of a partial design must be a complete physical product, and only partial fragments of the product shall not be submitted. The submitted views of the entire product shall clearly present:

• The partial design to be protected;

• The specific position of the partial design in the entire product; and

• The proportional relationship between the partial design and the entire product.

In this case, the press part of the ballpoint pen is claimed for protection, and the product shown in the views below is only a part of the ballpoint pen. In such a case, the shape of the entire product – i.e., the shape of the ballpoint pen – is not fully expressed, and the position and proportional relationship of the claimed partial design in the entire product cannot be determined, which fails to meet the requirements for the object of the application and will result in the rejection of the application.

The views of the complete product are shown as follows.

As an option, if the press part is a detachable and independent component, it is possible to file an application for an overall design patent, by submitting the six views and perspective view of the press part, and the views of the complete pen body may be submitted as reference views in use state.

According to the new examination guidelines of 2023, if the protected partial design includes a three-dimensional shape, the application documents must include a perspective view that clearly shows the partial design. The front view shall be an orthographic projection view that reflects the protected partial design to the greatest extent, and the front view shall not be entirely composed of dashed lines, and must include the protected partial design marked with solid lines.

View 1: Perspective view clearly presenting the protected area of the bottom.

View 2: Top orthographic projection view fully covering the protected partial design, meeting the requirements for the front view.

View 3: Side orthographic projection view excluding the protected partial design, failing to clearly express the key design points.

Specifically, in this case, the claimed partial design is the bottom part of the drainage basket. View 1 is a perspective view that clearly shows the partial design, View 2 is an orthographic projection view from the top, and View 3 is an orthographic projection view from the side. View 3 does not include the claimed partial design and cannot clearly and accurately show the partial design of the product for which patent protection is claimed. Therefore, View 2 needs to be selected as the front view.

According to the new examination guidelines of 2023, shape, pattern, and colour are the three elements of a design, and the statutory constituent element of a partial design is that it “must include a shape”.

Pure patterns or combinations of patterns and colours are not protected objects of partial design patents.

The protected partial design must meet the requirements of “independent area and complete design unit”; that is, the partial design outlined by solid lines must be closed and complete, with independent visual effects and design integrity.

In the original perspective view, the dashed lines result in an unclosed protected area and a failure to form a complete design unit. After modifying the dashed lines to solid lines, the partial design is closed and independent, complying with the element requirements for a partial design.

Specifically, in the following case, the part expressed by solid lines in the original perspective view is the partial design. However, due to the dashed lines indicated by the arrow below, the middle main part is unclosed, thus failing to form a relatively complete design unit. After modifying the dashed lines to solid lines, the middle main part forms a relatively complete design unit, thereby meeting the requirements for a partial design.

According to the new examination guidelines of 2023, multiple similar partial designs of the same product may be filed as a single application; the unity of multiple partial designs only refers to similar designs of the same product.

Partial designs of a set of products shall not be filed in combination; that is, the protection of a set of products is limited to overall design patents.

With the ‘basic design’ as the reference, the dual judgment dimensions are as follows:

• Whether the partial designs are similar; and

• Whether the position and proportion of the partial designs in the entire product are routine changes.

For the similarity judgment of partial designs, when comparing other designs with the basic design, it is necessary to judge not only whether the claimed partial designs are similar but also whether the position and/or proportional relationship of the partial designs in the entire product are routine changes.

Designs 1 and 2: The shape of the seat partial design is similar, the aspect ratio has minor changes, and the position and proportion are consistent.

Design 3: The shape of the seat has significant differences.

The entire product of the three partial designs in Case 1 is a seat, and the claimed partial design is the seat part of the seat, belonging to the same product. Taking Design 1 as the basic design, compared with Design 1, the shape of the partial design of the seat part in Design 2 is similar, with a minor difference in the aspect ratio, which is a minor local change, and the two partial designs are similar. The position of Design 1 and Design 2 in the entire seat product is the upper part, and the proportion in the entire product is also similar. Therefore, Design 1 and Design 2 are similar partial designs.

Compared with Design 1, the shape of the partial design of the seat part in Design 3 is different, and the difference is not a minor local change, so the two partial designs are not similar. In this case, it is unnecessary to further judge the relationship between the claimed partial design and the entire product where it is located. Therefore, Design 1 and Design 3 are not similar partial designs. In addition, if Design 2 is taken as the basic design, compared with Design 2, the shape of the partial design of the seat part in Design 3 is different, and the difference is not a minor local change, so the two partial designs are not similar. Therefore, Design 2 and Design 3 are also not similar partial designs.

The shape of the keys is the same, and the position difference is a routine change.

The entire product of the two partial designs in Case 2 is a keyboard, and the claimed partial design is the main body of the keyboard (see the part indicated by solid lines), belonging to the same product.

The shape of the keyboard main body and keys expressed by the solid lines in Design 1 and Design 2 is the same. It can be seen that the position of the keys in the partial design in the entire product is different. The different positions of the keys on the main body are routine changes in the field. Therefore, Design 1 and Design 2 are similar partial designs and may be filed in one application.

The entire product of the three partial designs in Case 3 is a mouse, and the claimed partial design is the upper cover part of the mouse, belonging to the same product.

The partial design of Design 1 is the entire upper cover (including the front, rear, and lower parts), the partial design of Design 2 is the front part of the upper cover, and the partial design of Design 3 is the rear and lower parts of the upper cover. That is, the positions of the three partial designs are different. Although Design 2 and Design 3 have the same parts as the partial design of Design 1 respectively, the proportion of the same parts is significantly different. Therefore, Design 2 and Design 3 are not similar to Design 1, and Design 2 and Design 3 are not similar to each other. These three partial designs do not meet the unity requirements and cannot be filed in one application.

Designs 1–3: Differences in knobs and keys are minor routine changes.

Design 4: The pallet has a large proportion and significant differences in visual effects.

The entire product of the four partial designs in Case 4 is a keyboard, and the claimed partial design is the main body of the keyboard, belonging to the same product.

The shape of the keyboard main body expressed by the solid lines in Design 1, Design 2, and Design 3 is the same, with the only differences in the knobs and the keys beside the knobs. It can be seen that the proportion of the knobs and the keys beside the knobs in the partial design in the entire product is small, and the change in quantity is a routine change in the field. Therefore, Design 1, Design 2, and Design 3 are similar partial designs and may be filed in one application.

The pallet in Design 4 accounts for a large proportion in the entire product, which has a significant impact on the overall design effect of the product and is significantly different from basic Design 1, thus being dissimilar and cannot be filed in combination with designs 1–3.

In the practical application of partial design patent filings, the principles of complete product carrier, clear view expression, shape as the core element, and statutory boundary of unity must be adhered to.

Applicants should strictly follow the requirements of the Patent Law, the Rules for the Implementation of the Patent Law, and the examination guidelines, and realise the efficient right confirmation and protection of local innovative designs through standardising the submission of views, accurately defining the scope of protection and complying with the rules for combined filing.