China has taken a further step towards aligning its regulations with the international protection system for designs. On June 1, 2021, the most recent reform of the country’s Patent Act entered into force, which includes significant changes to how industrial designs are regulated. The legal text, dating from 1985, has been reformed on three previous occasions (1992, 2000 and 2008). 

This new amendment was prompted by the need to update certain aspects of industrial design protection in China to align them with the protection systems of the other main intellectual property offices throughout the world. These new reforms will facilitate both the protection of foreign designs in China and the registration of Chinese design applications in other countries.

The recent regulatory amendments will also enable China to prepare for joining the Hague System of international design protection. Of the five largest intellectual property offices in the world that together make up the IP5 forum (United States, European Union, Korean Republic, Japan and China), China is the only country that is not yet a member of the Hague System.

China carries considerable weight in terms of the number of industrial design applications filed. The China National Intellectual Property Administration (CNIPA) is the national office with the most designs filed this century, accounting for 68% of global applications in 2019 (711,617 out of a total of 1,043,400, according to the World Intellectual Property Organization).

Key reforms

China’s new reform is part of its five-year strategic plan to improve protection and compliance with intellectual property, launched in 2017. The plan objectives include updating the industrial design protection system, as this particular aspect had been omitted from previous five-year plans. China has now decided to focus on industrial design, given its role as a driving force in the sectors of technological innovation, trade and industry.

The main changes to industrial design regulations in China are as follows:

Extension of the design protection period to 15 years

The reform extends the legal life of design registrations from 10 to 15 years, calculated from the application filing date. This is in line with the Hague System, which requires national designs granted by contracting states to be protected for a minimum of 15 years.

Possibility of protecting the design of product components

The legal concept of design has been amended to include the possibility of referring to either all or part of a product, which means applicants can specify the particular part they wish to protect through registration, without having to protect the design of the product as a whole.

This will help to make partial registration more commercially viable and also reinforce protection against possible infringements, as it will only be necessary to prove that the protected part has been copied (for example, a chair back, the text, objects or icons in a graphic interface or a watch face) rather than the entire product, bringing China into line with the other IP5 countries

However, it remains to be seen whether the CNIPA will allow dotted lines to be used in design drawings to indicate the parts of a product that are excluded from the design claimed, something that is standard practice in the main national offices.

Possibility of claiming national priority in design applications

Lastly, the new Patent Act introduces the possibility of claiming the priority date of a previous national design application within a term of six months from the filing date, to enable a subsequent improved or modified design application to be filed.

This new practice would eliminate the disadvantage that previously arose from the fact that if a registered design was slightly modified, a new registration application had to be filed in order for it to be protected, and that new application could be challenged on the grounds of the existing original application.

Anyone filing a design application in China in the six months prior to June 1, 2021 can now claim national priority to benefit from the new rules applicable to Chinese designs, as set out above, automatically extending the lifetime of the registration from 10 to 15 years and/or opting for partial protection of the design.

These changes substantially contribute to aligning Chinese industrial design regulations with the laws of most countries, thus laying the foundations for China’s imminent affiliation to the Hague System.

In short, the recent reform of the system for protecting industrial designs in China is a considerable step forward in encouraging innovation and reinforcing legal certainty, and it paves the way for the world’s largest market to join the international system of design protection.

 

 

Braulio Robles

Intellectual Property Department