[author: Xin Sun]
The Patent Law of the People’s Republic of China (hereinafter referred to as the Chinese Patent Law), which came into force on June 1, 2021, has made some amendments to the sections concerning design patents, including the introduction of the partial design system and the national priority of design, and the extension of the duration of the design patent right to 15 years. Among them, the applicants and the patent attorneys pay special attention to the introduction of the partial design system. The following sums up some noteworthy matters in the application for partial design patent.
By the end of February 2023, although the Implementing Regulations of the Chinese Patent Law and the Guidelines for Patent Examination, which serve to support and interpret the Chinese Patent Law, had not yet been introduced, the Revised Draft of the Guidelines for Patent Examination (Draft for Comments) and the Revised Draft of the Guidelines for Patent Examination (the Second Draft for Comments) had given much more specific explanations. The following is a summary with reference to these two drafts (hereinafter referred to as the “Drafts for Comments”).
- Noteworthy matters on partial design patent application
1.1 Subject matter patentable for partial design patent
Partial 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 part of a product, which creates an aesthetic feeling and is fit for industrial application. Where a product applying for a patent is a partial design, it is possible to file an application for a patent for partial design, such as “a carved pattern of a seat back”, “a tread of an automobile tire”, etc.
After the introduction of the partial design system, the partial designs that were clearly excluded from patent protection in the previous law and that cannot be divided or sold separately and cannot be used separately, such as heelpieces of socks, the peak of a hat, the handle of a cup, and so on, can apply for the partial design patent under the implementation of the new law. However, it should be noted that not all parts can apply for a design patent. To be specific, “a partial design that cannot form a relatively independent area on a product or cannot constitute a relatively complete design unit on a product”, such as a curve of a cup handle or an irregular part randomly taken from a lens of glasses, is clearly defined as a subject matter unpatentable for the design patent. In addition, designs that are simply patterns or a combination of patterns and colors on the surface of a product are also clearly excluded from patent protection. For example, a partial design of a simple pattern on a packaging box surface cannot be granted a partial design patent.
1.2 Pictures or photos of partial design
The Drafts for Comments provide that those who apply for a partial design patent should submit views of the overall product and employ a combination of dotted lines and solid lines or other ways to represent the claimed subject matter.
In Chinese practice, line drawings, rendered drawings and photographs can all be accepted as views of a design patent application. For the views of a partial design patent application, the line drawings may be more suitable to use the combination of dotted lines with solid lines to express the design, where the claimed part is shown in the form of solid lines, while other parts (or parts for which no protection is sought) are shown in the form of dotted lines. If necessary, the dot-dash lines can be used to represent the boundaries between the claimed part and other parts in the partial design. As for other ways to express the partial design of the product, the Drafts for Comments only offer one way, i.e., covering the parts for which no protection is sought with a translucent layer in a single color, which is usually applied to rendered drawings or photos.
Since no applications for partial design patent have entered the stage of announcement of granting of the patent right yet, the following only takes patents granted by other countries as examples for reference.
Publication (issue) No.: USD0927298S
Publication (issue) No.: JP0001716578S
As for the drawing method of combining rendered drawings/photos with line drawings, the patent below serves as an example. In this regard, the Drafts for Comments do not make any relevant explanations. This drawing method can be used in Japanese patent applications, but in China, this drawing method is generally not acceptable for overall design patent applications. Therefore, the possibility of such drawing method being accepted in a partial design application could be low. It is recommended not to use the combined drawing method in an application in China.
Publication (issue) No.: JP0001735901S
In addition, in order to clearly show the claimed partial design, sufficient views showing the partial design should be submitted, and the views of the overall product should clearly show the claimed partial design, its position in the overall product and its proportional relationship with the overall product. If the claimed part contains a three-dimensional shape, the submitted views should include a perspective view that can clearly show the part. If the part is likely to be interpreted as a plane pattern, it is suggested to add an exploded view or section view.
1.3 Regarding the title of product
As for the title of a product incorporating a partial design, the Drafts for Comments clearly provide that when applying for a patent for partial design, the claimed part and the whole product in which the claimed part is located should be indicated in the title of the product, such as “a door of a vehicle”, “a camera of a mobile phone”, etc. If it is difficult to determine the title of the claimed part, it is recommended to use the title of the whole product. For example, to protect the front half of a vehicle, it is possible to use “vehicle” as the title of the product.
1.4 Regarding brief description
For the purpose of product in the brief description, the purpose of the claimed partial design shall be clearly stated and shall be corresponding to the purpose reflected in the title of product. In addition, it is suggested to explain the expression method of the claimed partial design; for example, the solid lines represent the claimed part and the dotted lines represent the part for which no protection is sought; the part covered by the translucent layer of a certain color represent the part for which no protection is sought; and the dot-dash lines represent the boundaries between the claimed part and other parts. The designated views or photos which best show the design features should include the claimed partial design, and should avoid using views that do not contain the claimed partial design.
2. Noteworthy matters on the conversion between overall design and partial design, and multiple design application.
2.1 Regarding the conversion between overall design and partial design
It is provided in the Drafts for Comments that after expiration of the two-month period for voluntary amendment and within the deadline for replying to the Office Action, amendments under the following circumstances shall be deemed not to have been made and shall not be deemed to be made to overcome the issues pointed out in the Office Action, respectively, and shall therefore not be accepted:
(1) Change the overall design to partial design;
(2) Change the partial design to overall design; and
(3) Change a partial design of the same overall product to another partial design.
The standards applied to divisional applications are also strict. Where the original application involves the overall design of a product, it is not allowed to file a divisional application for a part of the overall design; and where the original application involves the partial design of a product, it is not allowed to file a divisional application for the overall design or for other partial designs. However, whether making one or more of the above amendments within the two-month period for voluntary amendment is accepted by the examiner is not specifically mentioned in the Drafts for Comments. The author thinks that such amendment(s) is (are) more likely to be acceptable.
2.2 Regarding multiple design application
In China, two or more similar designs of the same product or two or more designs which are incorporated in products belonging to the same class and being sold or used in set, may be filed as one application. It is also applicable to partial designs.
The Drafts for Comments clearly provide that “the overall design and any partial design of a same product shall not be filed as a single design application.” This provision deserves special attention.
In addition, it is also clarified that “two or more partial designs of a same product without connection can be regarded as one design if they are related in function or design and have a specific visual effect. For example, the two legs of a pair of glasses and the four corners of a mobile phone.”
Since no applications for partial design patent have entered the stage of announcement of granting of the patent right yet, the following only take patents granted by other countries as examples for reference.
Example 1: EU 008175624-0002, EU 008175624-0003
Example 2:JP0001736159S, JP0001736191S
Example 3: JP0001734302S, JP0001734350S, JP0001734351S, JP0001734352S
The above is a summary of some noteworthy matters on the application for partial design patent, based on the new Chinese Patent Law and the Drafts for Comments. After all, the Implementing Regulations of the Chinese Patent Law and the Guidelines for Patent Examination have not been officially introduced. Although the majority of the contents are believed to have been basically determined after several drafts for comments, the final implementing version officially introduced should still prevail.
