Protection of Registered Design in China

1. Protection of Registered Design in China Chen Jianling University of International Business & Economics , Beijing China School of Law

2. Overview of Design Protection System in China Design is protected in the legal framework of Patent Law together with invention and utility modelin China. • 1985 Implementation of Patent Law • 1992 The first amendment of Patent Law • 2000 The second amendment of Patent Law • 2008 The third amendment of Patent Law

3. International Treaties to Which China Has Acceded • 1984: Paris Convention for the Protection of Industrial Property • 1996: Locarno Agreement on Establishing an International Classification for Industrial Designs • 2001: WTO （TRIPS agreement)

4. Rapid growth in China－Application for patent design

5. Rapid growth in China－Application and grant for patent design

6. Design application for 0602 Bed products(2005-2012)

7. Design application for 0603Tableproducts(2005-2012)

8. Definition of Design in Chinese Patent Law Designs mean, with respect to a product, new designs of the shape, pattern, or the combination thereof, or the combination of the color with shape and pattern, which are rich in an aesthetic appeal and are fit for industrial application.

9. Examination/Grant for Design Main steps (1)Application (2)Preliminary examination No substantive examination is required for design patent. (3)Authorization

10. Examination/Grant for Design (1)application Delivery Methods of Application • File applications directly with the SIPO by hand delivery or by post, or indirectly via the local Receiving Office • File Applications electronically

11. Examination/Grant for Design (1)application For foreign applications: If a foreigner, foreign enterprise, or other foreign organization without a regular residence or business site in China intends to apply for a patent or handle other patent-related matters in China, he or it shall entrust a legally established patent agency with the application and such matters.

12. Examination/Grant for Design (1)application First-to-file principle If two or more applicants apply for a patent for the same invention separately, the patent right shall be granted to the first applicant.

13. Examination/Grant for Design (1)application Application documents shall include: • written request • drawings or pictures of the design • brief description of the design • other relevant documents.

14. Examination/Grant for Design(1)application classification • Locarno classification • The classification of products shall be taken into consideration in determining whether designs are identical or substantially the same

15. Examination/Grant for Design(2)preliminary examination "Preliminary examination” means: • documentary requirement • compliance requirement: compliance with the Patent Law and the Implementing Rules of the Patent Law

16. Examination/Grant for Design(2)preliminary examination compliance requirement: Art 2, Patent Law "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 product, which creates an aesthetic feeling and is fit for industrial application.

17. Examination/Grant for Design(2)preliminary examination compliance requirement: Article 5(1)of Patent Law Patent rights shall not be granted for invention-creations that violate the law or social ethics, or harm public interests.

18. Examination/Grant for Design(2)preliminary examination compliance requirement: Article 25(1), Item(6) of Patent Law • Patent rights shall not be granted for the following: designs that are mainly used for marking the pattern, color or the combination of the two of prints.

19. Examination/Grant for Design(2)preliminary examination compliance requirement: “prior design”, Article 23of Patent Law  Any design for which patent right may be granted shall not be a prior design, nor has any entity or individual filed before the date of filing with the patent administration department under the State Council an application relating to the identical design disclosed in patent documents announced after the date of filing.

Any design for which patent right may be granted shall significantly differ from prior design or combination of prior design features.

Any design for which patent right may be granted must not be in conflict with the legitimate right obtained before the date of filing by any other person.

The prior design referred to in this Law means any design known to the public before the date of filing in China or abroad.

20. Examination/Grant for Design(2)preliminary examination Other concerns • Priority rule • One application, one design(art. 31, Patent Law)

21. Examination/Grant for Design(3)approval Where it is found after preliminary examination that there is no cause for rejection of the application for a design, the SIPO shall make a decision to grant the patent right for design, issue the relevant patent certificate, and register and announce it. The patent right design shall take effect as of the date of the announcement.

22. Duration of design The design patent right shall take effect as of the date of announcement. 10 years from the date of filing

23. Forum of the Design Administrative dispute • Design Department of SIPO • Review Board of SIPO • Intermediate Court in BJ • Beijing High Court

24. Review of Design The patent administration department under the State Council shall establish a patent review board. If a patent applicant is dissatisfied with the decision made by the Patent Administration Department under the State Council on rejecting of the application, he may, within three months from the date of receipt of the notification, file a request with the patent review board for review.

25. Invalidation of Design Beginning from the date the SIPO announces the grant of a design right, if a unit or individual believes that such grant does not conform to the relevant provisions of this Law, it or he may request that the patent review board declare the said patent right invalid.

26. Assessment Report of Design • Adopted after the Amendment of Patent Law in 2008 • If a dispute over patent infringement involves a utility model patent or a design patent, the people's court or the administration department for patent-related work may require the patentee or the interested parties to present a patent right assessment report prepared by the patent administration department under the State Council through searching, analyzing, and assessing the relevant utility model or design, which shall serve as evidence for trying or handling the patent infringement dispute.

27. Scope of design right After the grant of the patent for a design, no entity or individual may, without the authorization of the patentee, exploit the patent, that is, make, offer to sell, sell or import the product incorporating its or his patented design, for production or business purposes.

28. Determination of infringement Main steps: • (1)To determine the scope of design patent protection • (2)To determine the identity or similarity between the two products • (3)To determine the identity or similarity between the two designs

29. (1)Scope of Design Protection The scope of protection shall be confined to the design of the product as shown in the drawings or pictures, and the brief description may be used to explain the said design as shown in the drawings or pictures.

30. (2)Productidentity/similarity Main considerations • Classification • Function and purpose of the disputing products • The actual sales of the disputing products

31. (3) design identity/similarity • Ordinary Consumer perspective • Overall investigation and comprehensive judgment • Interpretation for Several Issues regarding the Application of Laws in the Trial of Patent Disputes of the SPC( December 21, 2009), Art. 11 • Honda case in 2010 by SPC for automobile • Landmark case in 2011 by SPC for furniture design Junhao v. Jiayi Case

32. Interpretation for Several Issues regarding the Application of Laws in the Trial of Patent Disputes of the SPC According to the Interpretation, the judge must take all design features within the scope of protection of the design patent into account for the determination of its overall visual impression. When judging whether the designs are identical or similar, all the design features within the scope of protection of the patent right, those of the alleged infringing product and their overall visual effect shall be comprehensively considered.

33. Honda Case(2010, SPC) In its decision, the SPC provided a practical interpretation of the criteria of “comprehensive judgment”, a criteria also used by article 11 of the Interpretation. In particular, the SPC stipulated that when cars in certain categories adopt designs which have, or appear to have, a common configuration as a whole, this will have limited impact on the overall visual effect in the eye of an ordinary user for that type of car.

34. Junhao v. Jiayi Case(1)(SPC, 2011) The legal principle derived by the SPC stipulates that providing the design sued for infringement uses the design characteristic of the relevant design patent, simple replacement of decorative patterns in the compared product will not influence its overall similarity with the registered design.

35. Junhao v. JiayiCase(2) • The aesthetic characteristics in the design patent, which are remarkable for being different from the existing typical design for that type of product, have more significant influence to the overall visual effect of the design and contribute to the determination of its scope of protection. • These aesthetic parts of the design will also play a predominant role in the similarity determination. In particular, the SPC remarked that the round egg shape of the main cabinet body with the three drawers and four standing legs were the features determining the aesthetic visual effect of the design patent and that these parts had all been repeated in the compared design of Jun Hao. • The differences in color of the materials, size and shape of the legs, and other wood finish did not take away from the overall impression of similarity of design.