This comparison describes the systems in early 2014. China receives the world's largest volume of design applications and protects industrial designs within its Patent Law, in line with its industrial development needs. This article introduces the Chinese system and compares it with the systems in the European Union and the United States.
1. Protectable subject matter
Article 2 of China's Patent Law defines a design as a new design of a product's shape, pattern or their combination, or the combination of colour with shape or pattern, that has aesthetic appeal and is suitable for industrial application. Design protection therefore concerns the product's appearance, rather than a technical solution. The product must be capable of industrial manufacture.
In all three jurisdictions, design protection concerns ornamental appearance, not the product's technical functions. The EU has separate legislation, Council Regulation (EC) No 6/2002 of December 12, 2001 on Community designs. China instead protects inventions, utility models and designs under one Patent Law.
The EU and the United States protect the appearance of parts of products and graphical user interfaces (GUIs), while China's system at the time does not offer corresponding protection. Inseparable parts such as a cup handle, hairdryer handle or tyre tread cannot be protected alone in China. Patterns displayed when a product is powered on are excluded, so product designs incorporating GUIs are outside the scope of protection.
China is considering amendments to its examination guidelines that would narrow the exclusion to patterns displayed on a product that are unrelated to human-computer interaction or the implementation of product functions. This could make certain patterns on product displays eligible for design protection.
2. Examination
Under Article 40, SIPO grants a design patent if preliminary examination reveals no grounds for rejection. Preliminary examination covers formal requirements for the application documents, obvious substantive defects, and formal requirements for other documents and procedures.
The EU adopts a broadly similar approach. The Office for Harmonization in the Internal Market (OHIM) checks formal registration conditions and generally does not conduct substantive examination. In the United States, examiners normally search the relevant design classes to assess novelty and non-obviousness.
When filing a registered Community design (RCD), an EU applicant may request deferment of publication for up to thirty months from the filing date or priority date. This can help preserve secrecy. China and the United States do not provide a comparable deferred-publication mechanism.
3. Application documents
Article 27 of China's Patent Law requires a request, drawings or photographs, and a brief explanation of the design. The mandatory brief explanation is a feature of the Chinese system. It may be used to interpret the design shown in the drawings or photographs when determining the scope of protection.
Under Rule 28, the explanation must identify the product's name and use, the essential design features, and the drawing or photograph that best shows them. It must also identify any omitted view or claim to protection of colour. Applicants can therefore include information relevant to interpretation of the protected design, according to the circumstances.
A comparable brief explanation is generally unnecessary in EU or US design applications. An EU application may include a description explaining a representation or specimen, but that description does not affect the scope of protection.
An applicant claiming priority in China from an EU or US design application may consequently need to add a brief explanation. Rule 31 provides that, where the earlier application contains none, adding an explanation that complies with Rule 28 does not prejudice priority, provided it does not go beyond what the earlier drawings or photographs disclose.
4. Other points
Novelty grace period
China provides a six-month grace period for the three disclosures specified in Article 24: first display at an international exhibition sponsored or recognized by the Chinese government; first disclosure at a prescribed academic or technological meeting; and disclosure by another person without the applicant's consent. A design application filed within six months does not lose novelty and inventive step because of such disclosure. The EU and the United States provide a twelve-month period and cover a wider range of disclosures.
Priority
Under Article 29, a Chinese design application may claim foreign priority but not domestic design priority. For example, suppose A is a foreign international design filing under the Hague Agreement and B is a domestic Chinese design application. A later Chinese application C may claim priority from A, but not from B. China also requires the earlier application to be a design application: a foreign utility-model application cannot serve as the priority basis.
The EU allows an RCD to claim priority from a design or utility-model application filed in or for a state party to the Paris Convention or the WTO Agreement. In the United States, a design application cannot claim priority from a US provisional application.
Multiple designs in one application
Article 31 of China's Patent Law permits two or more similar designs for the same product, or designs for products in the same class that are sold or used as a set, to be filed in one application. Rule 35 limits similar designs for the same product to ten. Products sold or used as a set must belong to the same class of the International Classification for Industrial Designs.
In the United States, multiple designs may be presented in one application only if they embody a single inventive concept under the approach used for obviousness-type double patenting. Their overall appearances must have essentially the same design characteristics, with differences insufficient to distinguish them patentably.
In the EU, several designs may be included in one RCD application if the products indicated for all designs fall within the same Locarno class. The same-class requirement does not apply where all the designs concern ornamentation.
Protection periods
China's design term is ten years from filing. The US design-patent term described here is fourteen years from grant.
The EU offers two forms of protection. An unregistered Community design is protected for three years from its first disclosure to the public within the Community. An RCD is protected initially for five years from filing and may be renewed in five-year periods, up to twenty-five years in total.
