Workshop Design Filing Practice

Jean-Jacques Canonici Director and Patent Manager, Innovation EMEA Procter & Gamble Linda Liu Linda Liu & Partners Jakub Pinkowski Head of Designs Service, OHIM Chair: Keith Howick Carpmaels & Ransford Chair of INTA ’ s Design Rights Sub-Committee

Design Protection in China Dr. Linda LIU Linda Liu & Partners Chinese Patent Attorney

I. What product can obtain design protection in China? II. Requirements on the views of design applications in China III. Noticeable issues for foreign applicants to file design applications in China 1. How to guarantee clear indication by the views 2. How to guarantee priority 3. Designs united in one application 4. How to file design applications for component parts of a product 2

I. What product can obtain design protection in China? Article 2.4 –Definition of Design: In 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. RCD Housing for air filters, for engines 3

Article 5.1 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. Article 25.6 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. Signboard Bed sheet containing the pattern of RMB Tattoo machine with a horrible appearance Package containing the pattern of the national flag Printing Paper 4

II. Requirements on the views of design applications in China 1. A typical design application in China six-side views + a perspective view and a brief explanation 2. Form of the views: line drawings, rendering drawings (CG drawings) and photographs (1) Six-side views shall be made in the same manner with the same proportion; (2) For line drawings, only solid lines shall be used; (3) For rendering drawings or photographs, the background shall be plain; (4) The exploded view, sectional view, enlarged view and reference view can be submitted. 3. A design application shall contain a brief explanation, which includes the title of the product, the use of the product, the essential features of the design, and which designates a drawing or photograph that best shows the essential features of the design. 5

III. Noticeable issues for foreign applicants to file design applications in China 1. How to guarantee clear indication by the views Article 27.2 The relevant drawings or photographs submitted by the applicant shall clearly indicate the design of the product for which design protection is sought. RCD INDP: “Balustrades” 6

CN : Idle Pulley FRONT VIEW REAR VIEW LEFT VIEW RIGHT VIEW TOP VIEW BOTTOM VIEW Continued… 7

2. How to guarantee priority Designs of the same subject matter shall meet the following requirements (see the Guidelines for Patent Examination, Part IV, chapter 5, section 9): (1) Both of the designs are for the identical product; (2) The claimed design in the later application in China is clearly shown in the earlier foreign application. 8

(1). When the earlier application is for partial design (2). When the earlier application only has one perspective view (3). When the views of the earlier application contain those lines that are disallowed in China, for example rendering lines (4). When the design of the later application is not in accordance with the design of the earlier application 9 Continued…

Earlier application Later application 10 Continued… (1). When the earlier application is for partial design

Earlier ApplicationLater application 11 (2). When the earlier application only has one perspective view Continued…

Earlier Application Later Application 12 Continued… (3). When the views of the earlier application contain those lines that are disallowed in China, for example rendering lines

Earlier Application Later Application 13 (4). When the design of the later application is not in accordance with the design of the earlier application Continued…

3. Designs united in one application Pursuant to Article 31.2 of the Chinese Patent Law, an application 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”). No matter whether similar designs or products in set are united in one application, the official fees and the fees charged by the patent agency are paid based on one application, and each design can separately enjoy its right. In addition, uniting possibly similar designs in one application can prevent the problem of “double patenting” that might be caused by filing separate applications for respective designs. 14

Similar Designs CN : Packaging Bag 15 Continued…

RCD INDP: bottles with caps 16 Continued… Similar Designs (different color)

Products in set Products in set should meet the following requirements: 1) the products incorporating two or more designs belong to the same class in the International Classification for Industrial Designs; 2) the products have the same design concept; 3) the products are sold or used in set. The third amendment to the Chinese Patent Law extends the classification from “the same sub-class” to “the same class”. For example, bed + bedside table, table + chair, sofa + tea table, hat + coat + trousers could not be regarded as products in set in the past, but the current Chinese Patent Law allows them to be united in one application. 17 Continued…

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4. Design applications for component parts As long as the component parts 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. A product incorporating a design usually consists of a plurality of component parts. 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 component parts are usually filed. 20

FRONT VIEW RIGHT VIEW PERSPECTIVE VIEW TOP VIEW BOTTOM VIEW CN : Engine Piston 21

RCD : Housing for air filters, for engines 22

Thank You! 23