With the promulgation of Guidelines for Patent Examination 2023, this article will introduce the regulations for filing partial design applications in China.

Ⅰ. Introduction

Since the adopting the partial design system to the Chinese Patent Law effective on June 1, 2021, there has been widespread attention to the partial design protection. In the past two years, as the first and second Draft Amendments to the Patent Examination Guidelines were released for public opinion, we have explored strategies for filing partial design applications and gained experience responding to Office Actions of partial design applications. Below is the summary of our experience from a practical perspective in line with the revised Rules for the Implementation of the Patent Law (“the Rules”) and the Guidelines for Patent Examination (“the Guidelines”).

Ⅱ. Introduction and Development of the Partial Design Patent System

With the development of the economy and technology, the categories of industrial products have become increasingly diverse, and product design has become more and more varied. Meanwhile, product design has become more sophisticated to face the intense competition, resulting in a shrinking space for the overall designs. Inventors need to emphasize partial variations and improvements. Consequently, mere protection of the overall design is insufficient. The differences between China's design patent system and those of the United States, Europe, Japan, South Korea, and other regions have presented challenges for domestic and foreign applicants regarding global patent portfolio and protection. Against this backdrop, notable progress has been achieved in recent years through legislative amendments related to partial design patents.

Ⅲ. Introduction and Development of Partial Design System in China

In March 1984, the first Patent Law defined the patentable subject matter of design patents as “product of a whole and component.” It explicitly stipulates that inseparable parts or parts that cannot be individually sold are not eligible for patent protection.

On October 17, 2020, the Standing Committee of the National People’s Congress in China promulgated the fourth amended Patent Law, officially introducing the partial design system.

On June 1, 2021, the new Patent Law came into effect, and the system of partial design patents was officially implemented.

On May 5, 2022, China officially joined the Hague System.

On December 21, 2023, China’s State Council released the “Decision on Amending the Rules for the Implementation of the Patent Law and the Guidelines for Examination”. The revised Rules and Guidelines will be effective as of January 20, 2024.

Ⅳ. Summary of Revisions to Provisions Concerning Partial Design Patents

The revised Rules and Guidelines provide specific and detailed regulations for implementing partial design provisions that came into force on June 1, 2021.

The changes to the partial design patent system, taking into account the Patent Law implemented from June 1, 2021, as well as the amendments to the Rules and the Guidelines, mainly involve the following aspects:

1. Adopting the Protection of Partial Design

Under the former Patent Law, the protection of a design patent was limited to the whole product. However, the revised Patent Law implemented in June 2021 has allowed the protection of partial design. Article 2.3 regulates that:

"Design" refers to any new design of the shape, the pattern, or their combination, or the combination of the color with the shape or the pattern, with respect to the whole or part of a product, which is rich in an aesthetic appeal and is fit for industrial application. The revised Rules and the Guidelines have incorporated precise and definitive provisions concerning the protection of partial design.

2. Expanding Protection Term for Design Patents to 15 years

Under the former Patent Law, the protection term for design patents was 10 years, and it has been extended to 15 years according to Article 42.1 of the new Patent Law.

3. Adding National Priority for Design Patents

The former Patent Law stipulated that design patent may claim foreign priority only while the new Patent Law allows national priority, as stated in Article 29.2.

Ⅴ. The revised Rules further clarify:

1. A design application may claim national priority. The basis for the priority rights can be the drawings from the prior invention patent or utility model applications, or a prior design application.
2. As per Article 35 of the revised Rules, when claiming national priority, the earlier application is deemed withdrawn as of the filing date of the later application, except in cases where the drawings of the previously filed invention or utility model application are used as the basis for the priority claim in the design application.
3. Adding Specific Regulations for International Design Applications

The revised Rules include a new Chapter (Chapter 12) regarding international design applications as follows:

1. Provisions concerning filing requirements of Hague design applications and procedure adjustments in alignment with the revised Patent Law and the Rules
2. For a Hague design application designating China, the registration date of the international application shall be considered the filing date referred to in Article 28 of the Patent Law, i.e., the date on which the Patent Office receives the application documents.
3. For a Hague design application claiming priority, a copy of the priority application documents should be submitted within three months from the date of international registration publication.
4. To maintain the novelty of a design, if it has been exhibited for the first time at a government-sponsored or recognized international exhibition held in China or has been first published at a prescribed academic or technological meeting, a declaration should be made at the time of filing the Hague design application. Additionally, relevant evidence should be submitted within two months from the date of publication of the design application.
5. If a Hague design application includes two or more designs, the applicant may file a request for a divisional application and pay the required fees within two months from the publication date.
6. For a Hague design application, if the essential feature of the design has been indicated in the description, it is considered as having submitted a brief description.
7. For a Hague design application, where it is found after examination that there are no grounds for refusal, the patent administration department under the State Council shall grant the design patent right, notify the International Bureau, and make an announcement. Subsequently, the patent right for design shall take effect as of the announcement date.

Ⅵ. Summary of filing practice of partial design applications

1. The subject matter of partial design protection

A partial design refers to the new design of the shape, the pattern, or their combination, or the combination of the color with shape or pattern, of a part of a product, which creates an aesthetic feeling and is fit for industrial application.

According to the provisions of Section 4.4, Chapter 3, Part 1 of the revised Guideline, for protection of a part of a design or an inseparable product, an application for partial design shall be filed, such as “the carving on the back of the seat”.

Regarding the subject matter of partial design, Section 7.4, Chapter 3, Part 1 of the revised Guidelines provides two cases as follows where a partial design is not patentable:

(1) A design of a part that cannot form a relatively independent portion on a product or constitute a relatively complete design unit, for example, a curved line on the handle of a cup or an irregular portion of a randomly cut lens of glasses.

(2) The claimed partial design is limited to a design of a pattern on the surface of a product or a combination of the pattern and a color, such as “a pattern on the surface of a motorcycle”.

2. Product name of partial design applications

The revised Guidelines regulate that for partial design applications, 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", and "camera of a cellphone" (Section 4.4.1, Chapter 3, Part 1).

In practice, the product name can be "name of the whole product + name of the partial design element" or "name of the whole product + position of the partial design element". If the partial design element accounts for a significant proportion of the whole product and cannot be precisely named or positioned, the name can be "body of the (specific) product". We may use a camera as an example; depending on the scope of protection for the claimed part, the name of the product can be "Camera lens" (name of the whole product + name of the partial design element), "Camera top" (name of the whole product + position of the partial design element), or "Camera body" (body of the (specific) product).

3. Drawings or photographs of partial designs

In Chinese practice, design applications can be represented in lines, rendered pictures, or photographs. Regarding partial designs, the revised Guidelines (Section 4.4.2, Chapter 3, Part 1) provide that partial design patent applicants should submit views of the overall product and use a combination of solid and broken lines or other methods to indicate the claimed part.

From our experience, we summarize the following points regarding this provision:

(1) For partial design applications represented in line drawings, it is more appropriate to use a combination of solid and broken lines to indicate the portion that needs protection. Solid lines denote the claimed part, while broken lines represent other parts that are not claimed.

Below are examples of partial design applications prosecuted by Purplevine on behalf of clients for your reference:

Publication No.: CN308382743S

Application No.: 202130814247.8 (Status: Going through Registration Formalities)

(2) For partial design applications represented in the form of shaded drawings or photographs, it is more appropriate to use a translucent and monochrome overlay to cover the parts that are not claimed.

Below are examples of partial design patents prosecuted by Purplevine on behalf of clients for your reference

(3) Furthermore, when there is no clear border between the claimed part and the other parts, it is recommended to use a dash-dotted line to indicate the boundary.

4. Brief Description of Partial Designs

According to the revised Guidelines Section 4.4.3, Chapter 3, Part 1, here are some tips for partial design applications when preparing the brief description:

(1) Describe the use of the whole product, and if necessary, indicate the use of the claimed part. In practice, the applicant should state: "The use of the whole product is…" and "The use of the claimed part is..." These descriptions should correspond to the title of the product.

For example, let's consider a "garbage bin" whose title of the product is "a foot pedal of a garbage bin". In the brief description, with regards to the use, it can be stated as follows: "The use of the whole product is to contain garbage, and the use of the claimed part is to serve as a component to a garbage bin (or to serve as a foot pedal for a garbage bin)."

(2) The designated drawings or photographs should include the claimed partial designs that best represent the essential features.

(3) When portraying a partial design requiring protection with a combination of solid and dashed lines, the brief description should explicitly state that the elements depicted in dashed lines are excluded from the design claim.

Similarly, the brief description must still clearly identify the claimed part if representing a partial design needing protection without using a combination of solid and dashed lines. For example, it may specify that elements concealed by a semi-transparent layer of a specific color in the figures are not part of the design claim. The goal is to ensure unambiguous identification of the claimed elements for protection, irrespective of the method used to illustrate the partial design.

(4) It should be explicitly stated in the brief description if it is necessary to indicate the boundary line between the claimed part and other parts using dash-dotted lines.

Additional considerations related to practical aspects of applying for partial design patents will be shared in Part II.

Author:

Susy Su

Susy has over 15 years of experience in comprehensive IP management. She has worked at both companies and IP agencies, and specializes in international patent applications, patent analysis and patent litigation. She has handled thousands of foreign-related patent applications across the whole process, from drafting and responding to office action to requesting re-examination, as well as multiple patent invalidation and administrative litigation cases. Prior to joining PurpleVine, Susy previously worked at Foxconn Technology Group and AFD China Intellectual Property. Contact Susy at lei.su@purplevineip.com.

Yang Liu

Yang Liu specializes in handling industrial design applications both domestically and internationally, as well as managing responses to mechanical patent cases and overall patent portfolio development. Prior to joining PurplVine, she served as a Product Design Manager at Haier Group's Innovative Design Center, contributing to products that earned prestigious awards like IF and Red Dot.

Following her tenure in the corporate sector, Yang Liu worked in intellectual property departments and patent agencies. Since joining PurpleVine, she has earned an advanced training certificate in the Hague System and has successfully represented numerous applications for Hague industrial design patents. Her diverse clientele includes prominent names such as TCL, Ecovacs, Li Automobile, Breo, SF Express, and Xiaohongshu. Yang Liu is a qualified Chinese patent attorney. Contact Yang Liu at yang.liu@purplevineip.com.