As outlined in our previous post, on June 1, 2021 the Fourth Amendment to the Chinese Patent Law came into effect, allowing partial claiming in design patent applications. Until this past May, examination of most Chinese partial claim design patent applications had been held up by the China National Intellectual Property Administration (“CNIPA”), since the CNIPA had not published formal Examination Guidelines for partial design claiming. While formal Examination Guidelines have still not been published, the CNIPA has recently been issuing Office actions rejecting certain partial designs for failing to form a “relatively independent area” or a “relatively complete design unit” of a product. Since unclaimed broken lines can only be converted to solid lines (and vice versa) within two months from the Chinese filing date, a rejection indicating that the design fails to form a relatively independent area or a relatively complete design unit on a product can possibly mature into an incurable defect.
What Does it Mean to Fail to Form a “Relatively Independent Area” or a “Relatively Complete Design Unit” of a Product?
As illustrated below, the gray areas of the exemplary teacup represent claimed portions of the design (typically represented by solid lines) and the red areas represent unclaimed portions of the design (typically represented by broken lines). FIG. 1 claims the entire handle of the teacup and thus forms a “relatively independent area” or a “relatively complete design unit” for the teacup. In contrast, FIG. 2 only claims an arbitrary portion of the handle (i.e., does not represent a complete portion) of the teacup, and thus FIG. 2 cannot be said to form a “relatively independent area” or “relatively complete design unit” of the teacup. Accordingly, the claim of FIG. 2 would most likely be rejected by the CNIPA. Thus, although portions of a product can now be omitted in a Chinese design claim, our recent experience makes clear that the remaining claimed portion must be a relatively complete design covering either a complete structure or complete component of the product.
Since no formal Examination Guidelines have yet been issued by the CNIPA, these types of rejections are very subjective and different Examiners may treat the same factual situation differently. It also appears that it may take a few more years for the CNIPA to formalize guidelines and streamline this examination process to increase consistency between Examiners. Therefore, for the time being, it is very important for patent practitioners to be thoughtful when filing partial design patent applications in China.
Recommendations Moving Forward
If a Chinese design patent filing is necessary, various filing strategies can be implemented to ensure that protection is obtained such that one or more fallback positions can be relied upon in the event that a partial design claim is determined to be unsatisfactory.
