[Jian Xu] Practice notes on design filing in China

Unlike the common law system, designs are classified as a type of patent in China, in addition to inventions and utility models. This simple fact can sometimes bring enormous confusion if it is overlooked. For example, there may be a query from a US company which wants to do M& A in China, i.e. to acquire a Chinese company. The Chinese company claims to own a large portfolio of patents and therefore very strong on IP assets, thus it asks for a higher selling price. Indeed, the Chinese company has lots of patent numbers and patent certificates and all of them can be verified on the China patent database, except that these patents are all designs.

Designs are only preliminarily examined in China. The preliminary examination mainly covers the following aspects. (1) Is the application a proper subject matter for design registration? (2) Are there any obvious defects in the design? (3) Are the drawings or photographs clear and standard? (4) Is the brief description of the design properly drafted?

2-D designs mainly for labelling purposes are unallowable. In practice, this means that packaging with only a few words are not likely to be granted as before, as it is likely to be deemed as indication of origin. However, if the packaging is highly ornamented with pictures and stylisation, in addition to the wording, it is still possible to obtain 2-D design registration.

Partial designs, which are common in the US, Europe and Japan, are a controversial issue in China. Even under the new patent law, partial designs are not recognised. In practice, the problem with partial designs is mainly concerned with claiming priority. Dashed lines are used in partial design drawings to represent unclaimed parts of the product. But dash lines are unallowable in China. Very often, foreign applicants in the above jurisdiction may file design applications in China claiming priority from a partial design. It used to be the case that Chinese examiners would most likely refuse the priority claim because dashed lines are allowable in the drawings. With this problem becoming increasingly common, the examination guideline has become more relaxed. Currently, if the basic application of priority is a partial design application and dashed lines are used to show unclaimed parts, the applicant may remove the dashed lines or change them into solid lines.  According to current practice, such amendments will not affect the priority right.   

China used to adopt a strict “one design, one application” system. Now, multiple similar designs filed in one application are acceptable, i.e. one application may include two or more designs that are similar and used in the same product. Only one filing fee needs to be paid. This is still not as liberal as the European system, but is a good improvement.

It is mandatory to submit the “brief description of design” in addition to the application forms and design drawings when filing the design. It further stipulates that the “brief description of design” shall be used to interpret the design, giving it “quasi claim” status. Therefore, care must be taken to draft appropriate “brief description of design” when filing designs in China.