In order to adapt to the changing demands of the new market development, further improve China's patent protection system, and align China's patent protection with international standards, the State Council issued the "Decision on Amending the Implementing Regulations of the Patent Law of the People's Republic of China" on December 11, 2023.

The "Implementing Regulations of the Patent Law of the People's Republic of China" was promulgated by Decree No. 306 of the State Council of the People's Republic of China on June 15, 2001. It underwent its first revision based on the Decision of the State Council on Amending the Implementing Regulations of the Patent Law of the People's Republic of China issued on December 28, 2002, and its second revision based on the Decision of the State Council on Amending the Implementing Regulations of the Patent Law of the People's Republic of China issued on January 9, 2010. The current third revision is in accordance with the Decision of the State Council on Amending the Implementing Regulations of the Patent Law of the People's Republic of China issued on December 11, 2023.

The revised "Implementing Regulations" has come into effect on January 20, 2024. This revision involves significant changes and adjustments to the system, overall representing an important response to the needs of innovation entities and an optimization of the patent legal system.

To assist you in better understanding the significant changes in the revised "Implementing Regulations of the Patent Law" and to better serve your needs regarding patent prosecution and protection, we have summarized and explained the relevant contents and procedures. We hereby introduce the new regulations concerning design patent applications, in conjunction with the related content from the newly revised "Guidelines for Patent Examination."

Adjustment to examples of non-patentable designs and non-patentable circumstances of designs

  1. The following amendments and adjustments have been made to the section on the examples of non-patentable designs that violate laws or social morality or that are detrimental to the public interest.

(1) Designs for gambling equipment and drug paraphernalia are added to the list of examples of non-patentable designs that violate laws.

(2) Designs with vulgar content are added to the list of examples of non-patentable designs that violate social morality.

(3) Designs involving symbols and emblems of political parties are added to the list of examples of non-patentable designs that are detrimental to the public interest, whereas designs that cause adverse political impact are deleted from the list.

(4) "Designs using the Chinese national flag or national emblem as the pattern content" is amended to "Designs containing the content of the Chinese national flag or national emblem", which is also moved from the examples of designs that are detrimental to the public interest to the examples of designs that violate laws.

  1. The following amendments and adjustments have been made to the section on the non-patentable circumstances of designs

(1) "Any component part of the product which cannot be partitioned or cannot be sold and used independently, such as the heel of socks, the peak of a hat, the handle of a cup, and so on;" and "any design for which the protection is sought is not the design of the normal state of the product, for example the design of the state of an animal made with a handkerchief" are deleted from non-patentable situations of designs.

(2) "A partial design that cannot form a relatively independent area on a product or constitute a relatively complete design unit; for example, a turning line in the mug handle, or an irregular part of an arbitrarily cut lens of an eyeglass" and "a claimed partial design that is only a design of the surface of a product or a combination of patterns and colors; for example, the pattern on the surface of a motorcycle" are added to non-patentable circumstances of designs.

Newly-added provisions regarding partial designs

  1. Definition of partial design

Partial design refers to a new design that is aesthetically pleasing and suitable for industrial application, focusing on the partial shape, pattern, or their combination of a product, along with the combination of color and shape/pattern.

If protection is sought for parts of a product that cannot be separated, a patent application for a partial design should be submitted, for example, "carved patterns on a chair back".

  1. Product name for partial design

When a partial design patent application is filed, the product name should clearly state the specific part to be protected and the overall product it belongs to, for example, "Car Door of an Automobile" or "Camera Lens of a Mobile Phone."

  1. Drawings or photographs of partial design

For a partial design patent application, it is necessary to submit views of the entire product, using a combination of solid and broken lines or other methods to indicate the content of the claimed part.

The views of the entire product must clearly display the claimed partial design of the product, along with the position and proportion of that part within the overall product. If the claimed part includes three-dimensional shapes, the submitted views should include a perspective view that clearly shows that specific part.

The submitted views must clearly distinguish the claimed part from other parts. When a combination of solid and broken lines is used to indicate the content of the claimed part, the solid lines represent the claimed part, while the broken lines represent other parts. Alternatively, other methods may be used to indicate the content of the claimed part, such as covering the parts that do not need protection with a semi-transparent layer of a single color. If there is no clear boundary between the claimed part and other parts, dotted lines should be used to indicate the boundary.

  1. Brief description of partial design

The brief description for a partial design patent application must adhere to the following regulations:

(1) If methods other than a combination of solid and broken lines are used to represent the design of the claimed part, the brief description must specify the claimed part.

(2) If dotted lines are used to indicate boundaries between the claimed part and other parts, this should be specified in the brief description.

(3) The intended use of the claimed part should be described and correspond to the purpose reflected in the product name.

(4) Drawings or photographs that best illustrate the design points should include the design of the claimed part.

Adjustment of examination under Article 31(2) of the Patent Law

  1. Circumstances where designs of combination products or partial designs may be filed in one design patent application as a single design are added and clarified

(1) The design of a combination product constitutes one design. A combination product refers to a single product composed of multiple components, generally including the following three types of products depending on the assembly relationships:

- Combination products with only one option of assembly, such as a juicer and ice shaver machine composed of a juice cup, ice shaving cup, and base, or a complete kitchen cabinet with stove, oven, and dishwasher.

- Combination products with more than one option of assembly, such as building blocks that may be assembled into different shapes.

- Combination products needless of assembly, such as playing cards. Multiple arbitrarily arranged items, for example, randomly placed decorations on a table, are not a combination product.

(2) Designs of two or more unconnected parts of the same product that are functionally or design-related and create a specific visual effect may be treated as a single design. For example, the designs of the two temples of glasses or the four corners of a mobile phone.

  1. Adjustment of the examination provisions for more than two similar designs of the same product

(1) Same product

In accordance with Article 31(2) of the Patent Law, each design within one application should be for the whole or a part of the same product, such as designs for different types of dining plates. If the designs are for dining plates, saucers, cups, and bowls respectively, although they all fall under the same category in the international classification for industrial designs, they are not considered as designs for the same product.

(2) Similar designs

In general, upon overall observation, if other designs and the base design share similar or identical design features, with differences lying in subtle variations within specific areas, common design practices for such products, repetitive arrangement of design elements, regular variations in the position and/or proportion of the partial design within the whole, or changes only in color elements, they are typically considered to be similar designs.

(3) Design of sets of products

The designs within a set of products should be the overall design of the product set, rather than partial design of the product.

  1. Adjustment of the requirements for divisional applications

(1) If the initial application contains two or more designs, a divisional application should consist of one or several designs from the initial application and must not go beyond the scope defined in the initial application.

(2) If the initial application pertains to the overall design of a product, it is not permissible to submit a partial component as a divisional application. For example, if a patent application seeks to protect the design of a motorcycle, designs of components or parts of the motorcycle cannot be submitted as separate divisional applications.

(3) If the initial application concerns the design of a part of a product, it is not allowed to submit designs of the overall product or its other parts as divisional applications.

Adjustment of examination under Article 33 of the Patent Law

  1. Voluntary amendment by the applicant

An applicant for a design patent may take the initiative to file an amendment to the design patent application within 2 months from the filing date.

With regard to the amendment made beyond the two-month period, if the amended documents overcome the defects existing in the initial application documents, and have the prospect of being granted, the amended documents may be accepted. However, the following amendments are not considered to overcome the defects existing in the initial application documents, and the examiner will issue a Notification that Amendments Deemed Not to Have Been Submitted on the grounds that the two-month period for initiating rectifications has lapsed:

(1) Changing an overall design to a partial design;

(2) Changing a partial design to an overall design; and

(3) Changing one specific partial design within the same overall product to another partial design.

With regard to an amendment initiatively made by the applicant within the two-month period, the examiner shall examine whether or not the amendment goes beyond the scope of the disclosure as shown in the initial drawings or photographs. If the amendment goes beyond the scope of the disclosure as shown in the initial drawings or photographs, the examiner shall issue an Office Action.

  1. Amendment in response to defects pointed out in a notification

After receiving a Notification of Office Action or a Notification to Make Rectification from the Patent Office, the applicant shall make amendment to the patent application documents in response to the defects pointed out in the notification.

With regard to the amended document filed by the applicant which contains amendment not in response to defects pointed out in the notification, if the amendment is in conformity with the provisions of Article 33 of the Patent Law, and overcomes defect in the original application document and the application has the prospect of being granted, the amendment may be considered as an amendment in response to defects pointed out in the notification, and the amended application document shall be accepted.

However, even if the amendments do not go beyond the scope of the initial drawings or photographs, the amendments cannot be considered as addressing the defects pointed out in the notification in the following circumstances and will therefore not be accepted:

(1) Changing an overall design to a partial design;

(2) Changing a partial design to an overall design; and

(3) Changing one specific partial design within the same overall product to another partial design.

Adjustment of examination of product designs involving graphical user interfaces

Product designs involving graphical user interfaces refer to designs in which the design elements of the product include the design of a graphical user interface. Applicants may submit applications in both the form of an overall product design and the form of a partial design.

  1. Submitting the application in the form of an overall product design

For a product design involving graphical user interfaces, the applicant may submit the application in the form of an overall product design.

If the design features include both the graphical user interface design and the design of the product to which it applies, the views shall comply with the relevant drawing regulations in the Patent Examination Guidelines.

If the design focus is solely on the graphical user interface design, the applicant shall at least submit orthographic projection views of the product side involving the graphical user interface and, if necessary, views of the graphical user interface itself. The brief description should clearly indicate that the design focus is solely on the graphical user interface.

  1. Submitting the application in the form of a partial design

For a product design where the design focus is solely on the graphical user interface, the applicant may submit the application in the form of a partial design. The partial design may include views with or without the product to which the graphical user interface applies. The brief description should specify that the design focus is solely on the graphical user interface or a specific part of the graphical user interface.

(1) Submitting the application in a manner that includes the product to which the graphical user interface is applied

If it is necessary to clearly display the positioning and proportional relationship of the graphical user interface design in the final product, the applicant may submit the application in a way that includes the product to which the graphical user interface is applied.

The applicant shall provide orthographic projection views of the product side involving the graphical user interface as well as views of the graphical user interface.

When a design patent application is filed for a specific part of the graphical user interface, the product name shall specify the claimed part, such as, "search bar of the mobile payment graphical user interface on a phone."

The brief description shall clarify the intended use of the partial design for which protection is sought.

(2) Submitting the application in a manner that does not include the product to which the graphical user interface is applied

For a graphical user interface applicable to any electronic device, the applicant may submit applications in a manner that does not include the product to which the graphical user interface is applied.

Key terms like "electronic device" should be included in the product name, for example, "Video-on-demand graphical user interface for electronic devices," "Road navigation graphical user interface for electronic devices."

The applicant may only submit views of the graphical user interface. The brief description may summarize the product's use as a type of electronic device.

When a design patent application is filed for a specific part of the graphical user interface, the product name shall also specify the claimed part, for instance, "search bar of the mobile payment graphical user interface for electronic devices."

The brief description shall clarify the intended use of the partial design for which protection is sought.

Adjustment of the formulation of priority claims

  1. Claiming foreign priority

For a design patent application claiming a foreign priority, the prior application should be an invention patent application, a utility model patent application, or a design patent application.

  1. Claiming domestic priority

For a design patent application claiming a domestic priority, the prior application should be an invention patent application, a utility model patent application, or a design patent application; and it should not be a divisional application.

If an applicant claims a domestic priority for a design patent application, the prior application is deemed withdrawn from the date of the filing of the subsequent application. However, this withdrawal does not apply if the applicant claims domestic priority from an invention or utility model patent application. The prior application that is deemed withdrawn cannot be restored.

Deferred Examination

Applicants may request deferred examination at the time of filling a design patent application. The examination is deferred on a monthly basis, and the maximum duration of deferral is 36 months starting from the effective date of the request for deferred examination. After the expiration of the deferral period, the patent application will be examined in its regular order.

Prior to the expiration date of the deferral period, the applicant may also request the withdrawal of the request for deferred examination. Where the requirements are met, the deferral period will terminate, and the patent application will be examined in its regular order.

Newly-added applications for international registration of designs

  1. Filing an Application for International Registration of a Design

(1) Submission channels

An application for international registration of a design may be directly submitted to the WIPO. If the applicant has a habitual residence or business premises in China, they may submit the application to the WIPO through the CNIPA.

(2) Determination of receipt date

For an application for international registration of a design submitted to the WIPO through the CNIPA, if the WIPO receives the application within one month from the date it was received by the CNIPA, the date when the CNIPA received it is considered as the date of receipt by the WIPO. Otherwise, the actual date of receipt by the WIPO will be considered as the receipt date.

(3) Conditions for transmission from the CNIPA to the WIPO

The CNIPA transmits the application for international registration of a design to the WIPO if it meets the following conditions:

(a) At least one applicant has a habitual residence or business premises in China;

(b) At least one applicant selects China as a contracting party;

(c) The application documents for international registration of the design are written in English;

(d) Formal forms prescribed by the Hague Agreement are used;

(e) The application includes drawings or photographs of the design;

(f) China's mainland contact information in Chinese is provided;

(g) The application documents do not contain information that violates laws, social morality, or public interests.

(4) Transmission and non-transmission procedures

For international design registration applications that meet the transmission conditions, the CNIPA issues a Notification of Transmission of International Design Registration Application to the applicant. If the application does not meet the transmission conditions, the CNIPA sends a Notification of Non-transmission of International Design Registration Application to the applicant, stating the reasons for non-acceptance.

For international design registration applications submitted through the CNIPA, subsequent procedural documents must be directly submitted to the WIPO by the applicant.

  1. International publication

After a design registration application passes the formal examination by the WIPO, the international design registration will be granted. Subsequently, the WIPO will publish it in the International Design Gazette.

The international registration publication includes standard publication, immediate publication, and publication at a chosen time. Applicants can choose immediate publication or publication at a chosen time when submitting the application; if no selection is made, the WIPO will proceed with standard publication of the international design registration application.

(1) Standard Publication

The WIPO will publish international design registration applications that meet the requirements. Typically, the international registration will be published 12 months after the international registration date. Before the deadline expires, applicants may request early publication.

(2) Immediate publication

If an applicant requests immediate publication, the WIPO will publish the design registration immediately after completing the necessary preparations for international registration.

(3) Publication at a chosen time

If an applicant requests publication at a chosen time, the WIPO will publish the design registration according to the time chosen by the applicant (up to thirty months from the filing date or priority date). Before the chosen publication date, the applicant may request early publication.

  1. Processing of applications for international registration of designs designating China

(1) Determination of Chinese Filing Date: The international registration date is considered as the filing date in China.

(2) National Application Number: After the international design application is published by the WIPO, the CNIPA assigns a national application number and proceeds with subsequent examination.

  1. Examination of applications for international registration of designs designating China

(1) Text for examination basis

The English text of the international design application published by the WIPO; the amended text submitted in accordance with Rule 141 of the Implementing Regulations of the Patent Law; or the English rectification text submitted in accordance with Rule 50 of the Implementing Regulations of the Patent Law.

(2) Principles of examination

The principles of examination for international design registration applications are as follows:

(a) Formal or content examination of the application follows the provisions of the Hague Agreement and the Common Regulations under the 1999 Act and the 1960 Act. The examiner will not reject an international design registration application based on formal defects in the application documents.

(b) Examination for significant substantive defects and other documents and relevant procedures follows the provisions of the Chinese Patent Law, its Implementing Regulations, and Examination Guidelines.

(3) Priority

An applicant who files an international design registration application through the Hague System within six months of first filing a patent application on the same subject matter can enjoy priority without paying a priority claim fee if they designate China.

If a domestic priority is claimed, the prior application must meet the following conditions:

(a) The prior application is not a divisional application;

(b) The prior application has not claimed any foreign or domestic priority before, or even if it has claimed foreign or domestic priority before, it has not enjoyed priority;

(c) The prior application had not been granted by the filing date of the subsequent application.

After a preliminary examination determines that a domestic priority claim of an application meets the requirements, if the prior application is a design patent application, it is deemed withdrawn from the date of filing the subsequent application; such prior applications which are deemed withdrawn cannot be restored.

If an international design application does not meet the above-mentioned rules concerning priority or if the applicant fails to submit copies of the prior application or relevant proof before the deadline, the priority claim is deemed not to have been made and cannot be restored.

Applicants are not allowed to withdraw a priority claim with the CNIPA.

(4) Non-prejudicial disclosures

If an international design registration application falls under the following circumstances, the applicant may declare a non-prejudicial disclosure at the time of filing the application and within two months from the international publication date, submit proof documents before the CNIPA:

a) where it was first exhibited at an international exhibition sponsored or recognized by the Chinese Government; or

b) where it was first made public at a prescribed academic or technological meeting;

If an international design registration application falls under the following circumstances, the CNIPA may, when deeming it necessary, request the applicant to submit supporting documents within a specified period:

c) where it was first disclosed for public interest purposes in case of a national emergency or any extraordinary state of affairs occurs; or

d) where it was disclosed by another person without the consent of the applicant.

(5) Examination of drawings or photographs

The drawings or photographs submitted by the applicant should clearly show the overall or partial design of the product to be protected.

Views should have corresponding projection relationships, a single background, and only include the design to be protected. Line drawings may be submitted but technical drawings with axes and dimension labels should not be included.

Portions not claimed may be indicated using broken lines or semi-transparent shading, with explanations provided in a brief description.

It should be explained in the brief description that reference views showing the product in use, its environment, and other objects are not to be protected.

Regarding the design of three-dimensional products, if the design aspects involve all six sides, orthographic projection views of the six sides should be submitted. If the design aspects only involve one or a few sides, orthographic projection views of the involved sides should be provided. Other sides may be presented as orthographic projection views or as perspective views. Views of the sides that are not easily visible or cannot be seen may be omitted, but reasons for the omission must be stated in the brief description.

For partial design submissions, a perspective view of the entire product containing the specific part must also be provided.

(6) Examination of brief description

If an international design registration application published by the WIPO includes a description containing design points, it is considered as having submitted a brief description in accordance with Rule 31 of the Implementing Regulations of the Patent Law.

Design points refer to the shape, pattern, and their combination or the combination of color with shape and pattern of a product that distinguish the product from existing designs, which can also pertain to a specific part of the product. If protection for color is requested, this should also be explained in the brief description.

(7) Divisional applications

If an international design registration application includes two or more designs, the applicant may voluntarily submit a divisional application or submit one based on the examiner's examination opinions. A divisional application is treated as a Chinese design patent application for examination.

When voluntarily filing a divisional application, the applicant should do so within two months from the international publication date of the international design registration application. If the divisional application is filed based on the examiner's examination opinions, the divisional application must be filed within 2 months from the domestic publication date of the initial application at the latest.

After the specified deadline has passed, or if the initial application has been rejected, or deemed withdrawn without restoration of rights, generally a divisional application cannot be filed again.

(8) Notification of Rejection and its response

If there are significant substantive defects in an international design registration application, the CNIPA will issue a Notification of Rejection to the WIPO, detailing all reasons for rejection along with relevant legal provisions.

Upon receiving the Notification of Rejection, the applicant must, within a specified period (usually 4 months from the issue date of the notification), complete the necessary entrustment procedures as per Article 18 of the Patent Law and respond. In the response observations should be made in Chinese and amendments to the application documents should be made in English.

In cases where new defects arise in the response document, if they can be overcome through rectifications, the examiner will conduct a comprehensive examination and then issue a Notification to Make Rectification to the applicant. If the new defect represents a significant substantive issue that cannot be overcome through rectifications, the examiner will issue an Office Action to the applicant.

(9) Domestic announcement

After the CNIPA decides to grant protection to an international design registration application, it will announce the decision domestically. The design patent becomes effective in China from the date of announcement.

Regarding other matters already announced by the WIPO, except those involving changes in rights, the WIPO's announcements shall prevail.

Following the announcement, the applicant of the international design registration application may request the CNIPA to issue a copy of the Patent Register of International Applications for Designs as proof of protection in China.

(10) Termination of patent due to non-renewal

After the CNIPA's announcement of grant for an international design registration application, if the patentee fails to renew the patent in accordance with the Hague Agreement provisions, the patent terminates either 5 years or 10 years from the filing date in China.

(11) Partial waiver of rights

After the CNIPA's announcement of grant for an international design registration application, if the patentee requests a partial waiver of rights concerning China before the WIPO, the effective date of this partial waiver is the date of registration by the WIPO.

(12) Fee Payment

The international fees associated with the international process of an international design registration application must be paid directly to the WIPO.

For international design registration applications submitted through the CNIPA, the relevant fees may be paid to the WIPO through the CNIPA. The date when the WIPO receives the fees in its account is considered to be the date of payment.

The individual designation fee collected by the WIPO for an international design registration application will be transferred to the CNIPA. The CNIPA does not provide refunds for these fees.

Regarding fee-related matters in the international process, applicants should directly liaise with the WIPO.

Adjustment of standards relating to the examination of design patents in invalidation proceedings

  1. Conditions for patent grant

The existing design features that can be used for combination should be designs that are physically or visually distinguishable, possessing relatively independent visual effects. Arbitrary divisions of points, lines, or planes do not qualify as existing design features that can be used for combination. However, in the case of partial designs, corresponding parts in existing designs may be considered as existing design features that can be used for combination.

  1. Identical Designs

For partial designs, products of the same kind refer to products where the use of the product and the use of that particular part are identical.

  1. Substantially Identical Designs

For partial designs, to determine if they belong to similar kinds of products, it is necessary to consider both the product's overall purpose and the specific function of that part.

If upon overall observation, ordinary consumers can discern that the difference between the patent in question and a comparative design lies solely in routine variations in the position and/or proportional relationships of the claimed part in the overall product, then the patent in question is deemed to be substantially identical to the comparative design.

  1. Determining the Patent in Question

For partial designs, the shape, pattern, and color of the claimed part should be considered, taking into account the position and proportional relationships of that part in the depicted product.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.