ELM 14: Design Protection

Course description: 

Made for European companies who are good at design or whose products are specially designed, this E-learning Module is going to guide you through an easy learning about what you can do to protect your designs in China when unveil your designs to Chinese partners or bring your designed products to Chinese market. It covers the following topics: 

Chapter 1: Introduction about Design

Definition of Design

According to China’s Patent Law, a design is defined as“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.”

While most items with a distinctive exterior appearance can be covered by a design patent, the following cannot: two dimensional trade marks, parts of a design which can not be used or sold separately and items which contravene local law or have a negative effect on public interest.

A Chinese design patent provides exclusive use of the aesthetic features of a product, i.e. how the product looks as opposed to how the product functions. For example, a design patent could protect the external appearance of a hair dryer but not the mechanism which causes air to blow. In addition two products with different functions but which appear the same may be covered by the same design patent. For example, the same design patent could apply to two generations of mobile phone with the same external appearance but different functionalities.

What element(s) of the object are covered by design?

  • The shape of the object
  • The pattern of the object
  • The combination of the shape and the color of the object
  • The combination of the pattern and the color of the object
  • The combination of the shape, pattern and the color of the object
  • The color of the object

Case study

I created the left design, if I will use it on a product, say a scarf, how can I protect it from being copied by others in China?

Option 1: I can protect it as unregistered design as what I can do in Europe.   

Option 2: I need to apply for a design patent in China.

Option 3: I can protect it as copyright in China.

Explanation

1. China doesn’t protect ‘unregistered design’ right.

2. Pure graphic design is usually not protected subject of a design patent in China. If however the image is used in a scarf and new then it can be registered as a design patent.

3. Copyright can offer an additional layer of protection as it protects images of the design. 

More readings

Although a Chinese design patent protects only the aesthetic features of a product, the product does not have to look ‘good’ – the product only has to have features that can be observed through a person’s eyes alone. Furthermore, the product has to be capable of being sold or used independently. As such, spare parts that can be sold separately can be protected by design patents in China.

A patent design provides the right holder to exclusive use of a product design for a period of 10 years. As well as providing a legal basis to fight against counterfeiters, a design patent allows you generate additional revenue by licensing the design to third parties.

Chapter 2: Some Differences regarding Design You need to Know

Introduction

IP category

European design system

Industrial design

In Europe, industrial design is widely used to refer to the external appearance of a product or part of it and is ornamental or aesthetic. It may consist of three-dimensional features such as the shape or surface of the article, or two dimensional features such as patterns, lines or colors.

Chinese design system

Design patent (a type of patent)

In China, design falls under the scope of patent protection and is defined as “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.”

Unregistered design right protection

European design system

Protected, 3 years

An UCD means that any design made available to the public domain is protected from being copied for three years from the date of publication.

Chinese design system

NOT protected

While in China no protection is offered to unregistered designs.

Maximum term of protection

European design system

UCD - 3 years; RCD - 25 years

In comparison to the 3-year protection offered by UCD, in Europe, a longer term of protection is available by filing registration as RCD which provides 25 years of exclusive use of the design to the right holder.

Chinese design system

Design patent - 10 years

In China, a design patent is valid for a maximum of 10 years. [In the recent revision draft of China’s Patent Law, an extension of design protection term to 15 years is stated.][1]    

[1] http://www.chinalaw.gov.cn/article/cazjgg/201512/20151200479591.shtml

Novelty requirement

European design system

12-months grace period[1]    

EU Community Design offers a one year grace period which allows producers to commercialise their products incorporating a new design during the 12-month period preceding the date of filing the application for the same design. During this short period of time the design will be protected through the unregistered right offered by the Regulation on Community designs. [The “grace period” is extremely useful to determine whether seeking protection for a design is likely to be worth the time and money required and to test consumers’ response to that specific product.]

[1] http://www.ipkey.org/en/resources/ip-information-centre/31-designs/2222-roadmap-for-how-to-register-and-protect-a-community-design

Chinese design system

Narrow grace period

China applies a narrowly defined grace period which only renders 6 months before the filing date (or the priority date, which ever first) and strictly subject to the following situations: 1. It is exhibited for the first time at an international exhibition sponsored or recognized by the Chinese government. 2. It is published for the first time at a specified academic or technological conference. 3. Its contents are divulged by others without the consent of the applicant.

Protection over spare parts

European design system

Protected

In European IP regime, partial design is protected as stated in the law – a design is the external appearance of a product or part of it, resulting from the lines, contours, colors, shape, texture, materials and/or its ornamentation.

Chinese design system

Not protected if the parts cannot be sold separately

China’s Patent regulations in effect stipulates that design on spare parts of a product that cannot be divided, nor be used and sold solely is not patentable. [A legislation change on this regard would be made, according to the undergoing revision of the Patent Law, “partial design” is clearly stated in the definition of design – “Designs mean, with respect to the whole or part of 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.”]

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Lorem Ipsum is simply dummy text of the printing and typesetting industry. Lorem Ipsum has been the industry's standard dummy text ever since the 1500s, when an unknown printer took a galley of type and scrambled it to make a type specimen book.

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Lorem Ipsum is simply dummy text of the printing and typesetting industry. Lorem Ipsum has been the industry's standard dummy text ever since the 1500s, when an unknown printer took a galley of type and scrambled it to make a type specimen book.

Publication

European design system

Deferred publication is available for up to 30 months

An applicant for a registered Community design may request deferment of the publication for up to 30 months from the date of application or the priority date, if claimed. Deferment is a particularly useful tool for designers or companies that need to keep their designs confidential; avoiding disclosure until the product is actually on the market.

Chinese design system

Immediate publication after grant

Examination period

European design system

1.5 months or speedy procedure

In Europe, the average time needed to register a Community design is currently around six weeks, but the most straightforward cases can be registered in a matter of days[1].

    

[1] http://www.ipkey.org/en/resources/ip-information-centre/31-designs/2222-roadmap-for-how-to-register-and-protect-a-community-design

Chinese design system

3 months

In China, according to SIPO’s release, the average examination period for a design patent application is 3.8 months in 2013, 3.7 in 2014 and 3 in 2015[1]. 

From the application is filed to granted (including examination and publication), you should give an expectation of 6 – 8 months.

  

[1] http://www.sipo.gov.cn/gk/ndbg/

Tick from following designs that would be protected by Chinese design patent?

  • A rewarded design in the European Design Week (a magazine)
  • The interior design of my beauty saloon
  • Design of a spare part in my machine, e.g. the handle (which is not used or sold separately)
  • A design has already been registered in Europe 4 months ago
  • My painting work

Chapter 3: Comparison between design and other IP rights

Design Patent vs. Invention Patent vs. Utility Model Patent

Design

No need to have functionality

Utility Model

Yes, be functional to solve technical problem

Inventive ideas realized as product

Invention

Yes, be functional to solve technical problem

Inventive ideas realized as product and/or method

Protected matter

Aesthetic features, i.e. the appearance of a product


Inventive ideas realized as product


Inventive ideas realized as product and/or method

What to determine the protection scale

Picture(s) of the design


Literal description on right claims


Literal description on right claims

Design vs. Copyright

In theory...

In China, copyright and design patents serve two distinct functions: copyright protects the physical expression of an idea whereas a design patent protects the aesthetic features of an industrial product.  

In practice...

Sometimes, a design can be protected either by design patent or copyright, by selecting different IP, you may face different results

Design

Patented design prohibits repeat of identical or similar designs.

Protection term: 10 years

Product dependency: design must be based on product

Copyright

As long as it is created independently, repeat of identical or similar design is allowed. 

Protection term: 50 years

Product dependency: Unnecessary 

How to choose...

Some companies may ask when a design patent should be used and when copyright should be used to protect a product. In general, design patent protection should be considered whenever a product with new and distinctive aesthetic features is in development.

Practical Strategy

The line is blurred if the product has two-dimensional (2D) design features such as patterns, colors or their combinations. It is advisable to protect products with 2D design features by copyright initially, and where possible apply for design patent protection.

When counterfeit items are offered for sale, especially online, they often use copyright protected images. Providing copyright ownership can be proved, this can be a successful IPR protection strategy. This strategy is useful in cases where a design patent cannot qualify for a design patent, for example, if the product has been disclosed in Europe and cannot meet the absolute novelty requirement for a design patent.

Design vs. Trade Mark

Design

Design mean, with respect to a proudct, 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. 

A two-dimensional (2D) design features would be excluded if these are mainly used for identification i.e. being used as trade mark.

Trade Mark

A trade mark is a sign composed of words, devices, letters, numerals, three-dimensional signs (shapes), combinations of colors, sound, or any combintation thereof, that serves the specific and primary purpose of identifying the goods or services of a producer.  

Chapter 4: Registration of Design (patent) in China

Patentability

Rule of “absolute novelty”: 

To be patentable in China a design must have absolute novelty, i.e. it must not have been published anywhere in the world before the date of application and must be sufficiently distinguishable from other designs. If the design was disclosed anywhere in the world before the design patent application was filed, the patent could be susceptible to invalidation proceedings. Therefore if you plan to pursue a design patent in China make sure your design is treated as a trade secret and not made public in your home country or elsewhere in the world before the application has been made.

  • [China accepts “Priority Date” claim in the application filed in China following an original application made in overseas, if the gap is within 6 months, then the filing date of the first application is allowed to use in the second application.]
  • Remember the novelty requirements in Europe and China are different. China requires absolute novelty whereas the EU Community Design allows a one year grace period and protects unregistered designs for three years. If a design has been disclosed in Europe, including filing for a Registered Community Design, then novelty has been lost and it will not be possible to obtain a design patent in China. The only exception is if a Chinese design patent is applied for within six months, the European filling date can be claimed as the ‘priority filing date’.

Rule of “spare parts”: 

The product has to be capable of being sold or used independently. As such, spare parts that can be sold separately can be protected by design patents in China.

See examples in left.

The undergoing amendment of the current Patent Law of China has incorporated provisions on partial design protection following soliciting comments from public. In the revision draft is says: “Designs mean, with respect to the whole or part of 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. ”

Who can do it?

A designer has the right to state in the patent documents that he is the designer. 

A foreigner, foreign enterprise, or other foreign organisation without a regular residence or business site in China intends to apply for a design or design patent-related matters in China, shall entrust a legally established patent agency with the application and such matters. 

Our advice:

We recommend you carefully choose a patent agent or attorney to support this process. The importance of Chinese language accuracy is very high as it the value of experience in filling patents in knowing what the examiner would like to see and what common mistakes lead to a rejected application.

Where to do it?

Design patent applications in China should be made to the State Intellectual Property Office (SIPO) and must be made in Chinese.

How to do it?

1) Submit application in Chinese to SIPO

2) SIPO conducts a "formal examination" (Looking at, for example: unity, content of the ap;;ication documents, the applicant's qualifications, the right of priority, and so on.)

3) SIPO issues Decision to Grant if the application passes 2); if not, issues Office Action, the applicant should submit Response to Office Action and redo 2)

4) SIPO  publishes the patent registration via SIPO Patent Gazette, and issues Patent Certificate. 

How much does it cost?

How long does it take?



The entire process takes around six to eight months if there are no significant delays. 

What materials does it need?  (1)

In the application, other than name, nationality and address of the applicant(s) and designer(s), title of the design, and drawings/photos (known as views) of the design itself, a brief description of the design including the following must be provided:

  • Name of the product.
  • Use of the product, which determines the class of the product and the scope of protection. For example, ‘car’ and ‘toy car’ would fall under completely different classes but the same external design could be used for both and a car manufacturer may wish to produce or license production of replicas of popular car models. Therefore we recommend you consider all possible future uses of the design and make the scope as wide as possible.
  • Indication of the essential design feature(s), that is, the major difference(s) of the design from any prior designs patents (held by you or another company).
  • A drawing or photograph for publication when the design patent is granted.
  • Specifics of the colour used if colour is claimed. In general it is better not to claim colour to provide a broader scope of protection. If colour is claimed it is recommended to provide images and claim colour in relation to the images rather than providing a specific CMYK value as this would also make the scope of the patent very narrow. If an infringer would produce your product but change the colour only slightly a narrow patent scope would mean you could not enforce against the infringer.
  • Other additional information, for example symmetric view(s), omitted view(s), basic design of multiple similar designs, transparent material used, and so on. Seek advice from your patent agent or attorney on what additional information will bring value to your application.

What materials does it need? (2)

Once the application has been accepted and found to include all relevant information it will be passed to preliminary examination (about one to two months after it is filed). Although no patentability searches will be carried out during preliminary examination (for example, the examiners will not ensure the patent is novel), Chinese examiners are sensitive to defects in design drawings which could delay or even prevent the granting of the patent.

Therefore we recommend the following:

  • avoid mislabeling the views (eg stating the side is the top and so on), avoid unclear images and inconsistencies between the views.
  • do not include the following: shadows, dotted or dot-dash lines, lines to show a label etc which could be misinterpreted as design features;  
  • ensure the same scale is used in all drawings;
  • ensure enough views are provided to show detail in a product with multiple sides;
  • double-parallel dash lines can be used to represent a section omitted from a long product when the middle part does not contain any design features or the pattern is repeated. Applicants should be careful when using such lines not to confuse the examiner;
  • for certain products, such as some toys, you may wish to present a cross-sectional view to show a design feature which would not be visible when the product is in its packaging. Sections lines or appropriate symbols should be used to indicate a cross-sectional view;
  • when providing an enlarged view of one segment, be sure to clearly label the location of the segment.

Tips on a successful application

Within the limits of ten similar designs, it is recommended to include as many similar designs as possible in one application in China to save on application fees. In practice the threshold for similarity in China is not that high but in case an examiner finds one (or more) design(s) is not similar enough, you can then divide the application up. Additionally, in case one design within the multiple application is later found to be invalid it will not affect the overall patent. 

For the brief description, the following are advisable:

  • Include as many uses of the design as possible For example, for a car design, the uses including in the brief description could be “The design is to be used in automobile, and toys”.
  • Although the Chinese State Intellectual Property Office (SIPO) states that design protection scope is not affected by the essential design features and/or indication of colours in the brief description, it is advisable to provide as little information on these points as possible to avoid restriction on design protection scope at the Courts.

Chapter 5: Enforcement of Design

Administrative

China’s administrative bodies have the authority to enforce IPR. In the case of design patents, they can be enforced by local Intellectual Property Offices (IPOs). If you believe your design patent is being infringed the local IPO can support you to conduct a raid and if evidence is found, to stop the infringement by closing down production and imposing a fine. It is not possible for you to seek damages through the administrative enforcement system but it can be a relatively inexpensive and quick way of stopping infringement.

Courts

In order to seek damages a design patent holder can enforce their IPR through the relevant courts. Although a court case may be expected to be lengthy and costly, a design patent has some advantage over other patent types. A design patent infringement is indicated by a visual comparison between figures of the design patent and the infringing products, which is easier than determining infringement in an invention patent case. This means that the enforcement of a design patent has certain advantages including faster proceedings, lower costs and higher level of certainty of the outcome due to the fact it is easier for the Chinese People’s Court to accept and handle design patent cases. Companies such as Kenwood have experienced success in China in enforcing their design patents through the courts.

Customs

Customs Chinese Customs is an effective IP enforcement tool in China, but frequently overlooked by European SMEs. Chinese Customs can support IP protection due to the fact that not only goods imported into China are monitored, but also goods exported out of China. China Customs has the authority to seize and destroy shipments of IP infringing goods to be exported. Although the majority of infringing goods are identified through trade mark infringement, a design patent can also be used as a visual identifier of infringement. China Customs offers a system of recordal of IP into their central database which supports Customs officers to spot infringing shipments.

Chapter 6: Wrap up (Take-away Messages)

• Register your design patent in China before you disclose your design patent anywhere in the world, otherwise your design patent can be invalidated.

• Design and copyright in China protect different items. If a product is to be made from design diagrams, then design patent protection should be considered.未命名的内容

• Since 1 May 2014, it is possible to protect graphical user interface (GUI) by a Chinese design patent.

• Multiple design application (up to a maximum of ten designs) should be considered actively whenever possible.

• Due to the unique Chinese IP infringement environment and the nature of design patent, design patent infringement litigations are very active, and good litigation results can be obtained by the owners of design patents.

? What will you do to protect your design when you exhibit a new backpack in China?

  • Obtain design patent registration for it
  • Do nothing
  • Consult China IPR SME Helpdesk for general advice