Chapter 3 preliminary Examination of patent Applications for Design
1. Introduction
under Articles3 and 40, the patent office receives and examines the patent application for design. where it is found after preliminary examination that there is no grounds for rejection of that application, the patent officeshall make a decision to grant the patent right for de- sign, issue the certificate of patent for design, register and announce it. Therefore,the preliminary examination of an application for design is a necessary procedure after receipt of an application for design and be- fore granting the applicant a patent right for design.
The scope of the preliminary examination for an application for design is as follows:
(1)formal examination of the application documents, including whether or not the application contains the application documents as provided for in Article27 . 1, and whether or not those documents com- ply with the provisions of Rules2 , 3 . 1 , 16 , 27 , 28 , 29 , 35 . 3 , 51 , 52 ,
119, and 121 ;
(2)examination on obvious substantive defects of the application documents, including whether or not the application obviously fallsun- der Article5 . 1 or 25 . 1 (6), or is not in conformity with the provi- sions of Article18 or 19 . 1, or is obviously not in conformity with the provisions of Articles2 . 4 , 23 . 1 , 27 . 2 , 31 . 2 or 33, and of Rule43 . 1 ,
or is not entitled to a patent right in accordance with the provisions of Article9;
(3)formal examination of other documents, including whether or not other documents and formalities relating to the application are in conformity with the provisions of Articles24 , 29 . 1 , 30,and Rules6 ,15 . 3 , 15 . 4 , 30 , 31 , 32 . 1 , 33 , 36 , 42 , 43 . 2 , 43 . 3 , 45 , 86 , 100;and
(4)examination of the relevant fees, including whether or not the relevant fees have been paid in accordance with Rules93 , 95, and 99 .
2. principles of Examination
In the procedure of preliminary examination, the examinershall a- bide by the following principles of examination.
(1)principle of confidentiality
In the patent application examination and approval proceedings, the examinershall be obliged to keep secret the patent application doc- uments and other patent application related contents that are not an- nounced, and other information that is not proper to be made known in accordance with the relevant provisions on secrecy.
(2)principle of written examination
The examinershall examine on the basis of the written documents submitted by the applicant. The office Action (including Notification to Make Rectification)and the result of examination shall be sent in written form to notify the applicant. In the preliminary examination procedure, no interviewshall beheld in principle.
(3)principle of hearing
Before making a decision of rejection, the examinershall notify the applicant of the facts, grounds and evidence for rejection, and give the applicant at least one opportunity to make observations and/or a- mend the application documents. when the examiner makes a decision of rejection, the facts, grounds and evidence for rejection shall have been notified to the applicant, and the decision shall not contain any new facts, grounds and/or evidence.
(4)principle of procedural economy
where in conformity with the provisions, the examinershall im- prove the efficiency of examination as much as possible, and shorten the examination period. with regard to the application with defects that can be eliminated through rectifications, the examinershall con- duct a comprehensive examination and do his best to point out all the defects in one Notification to Make Rectification. with regard to the ap- plication with substantive defects that cannot be eliminated through rectifications, the examiner may only point out the substantive defects in the office Action without examining the formality defects in the ap- plication documents and other documents. with regard to the applica- tion with defects that can be eliminated through amending ex officio ,
the examiner may not issue Notification to Make Rectification.
In addition to complying with the above principles, the examiner shall notify the applicant of subsequent procedures that can be initiated while making the decision that the application is deemed not to have been filed, the decision that the application is deemed withdrawn, or the decision of rejection.
3. Procedure of Examination
3. 1 Notification to Grant Patent Right
where it is found after preliminary examination that there is no grounds for rejection of the application for design, the examinershall make Notification to Grant patent Rightfor Design. The application for design for which the patent may be granted includes the application which complies with the requirements of the preliminary examination without the necessity of rectification and the application which com- plies with the requirements of the preliminary examination through rec- tification.
3.2 Rectification of Application Documents
During the preliminary examination, for a patent application whose application documents have defects that can be eliminated through rectifications, the examinershall conduct a comprehensive ex- amination and issue Notification to Make Rectification. where the de- fects still exists in the application documents after the applicant makes rectification, the examinershall issue another Notification to Make Rec- tification.
Besides the information of the person who receives correspon- dence and the bibliographic data of the application, Notification to Make Rectification shall include the followings:
(1)indicate the type and the submission time of the file which the Notification to Make Rectification is aimed at;
(2)point out the defects existing in the application definitely and concretely, and state the grounds in the patent Law and itsImplemen- ting Regulation;
(3)explain the oriented opinion of the examiner and the possible suggestions, in order to help the applicant understand the examiner, s intention;and
(4)specify the time limit for response.
3.3 Handling of obvious substantive Defects
During the preliminary examination, for a patent application whose application documents have obvious substantive defects that cannot be eliminated through rectifications, the examinershall issue the office Action.
Besides the information of the person who receives correspon- dence and the bibliographic data of the application, the office Action shall include the followings:
(1)indicate the type and the submission time of the file of which the office Action is aimed at;
(2)point out the defects exist in the application definitely and con- cretely, state the grounds in the patent Law and its Implementing Regu- lations, and analyze the fact that the application documents have obvi- ous substantive defects together with related evidence if necessary;
(3)indicate the examiner,s oriented opinion and grounds in the patent Law and its Implementing Regulation on which the examiner is intended to reject the patent application;and
(4)specify the time limit for response.
3.4 Response to Notification
The applicantshall, after receiving the Notification to Make Rectifi- cation or the office Action, make rectification or observations within the specified time limit. The applicantshall, when making rectification of the application, submit the rectification and the corresponding re- placement sheets of the amended documents. The replacement sheets of the amended application documents shall be in duplicate, while only one copy is required for other documents. The amendment to the ap- plication documents shall be made concerning the defects indicated in the notification or office Action, and shall not go beyond the scope of the disclosure contained in the drawings or photographs filed on the date of filing.
where the applicant makes no response within the time limit, the examinershall, depending on the circumstances, issue Notification that Application Deemed to be withdrawn or other notifications. where it is difficult for the applicant to make response within the specified time limit due to justified reasons, he may request to extend the time limit. The provisions of chapter7, section 4 of part V of these Guidelines shall apply when handling the request for extension of the time limit.
where an application is deemed to have been withdrawn resulting from failure to meet the time limit due to force majeure or other justi- fied reasons, the applicant may, within the prescribed time limit, submit a request to the patent office for restoration of the right. The provi- sions of chapter7 , section 6 of part Vof these Guidelines shall apply when handling the request for restoration of the right.
3.5 Rejection of Applications
where obvious substantive defects exist in the application docu-
ments and remain unrectified after the applicant makes observations or
amendment upon the examiner,s issuance of the office Action, or
where formality defects exist in the application documents and remain unrectified after the applicant makes observations or rectification upon the examiner,s issuance of Notification to Make Rectification twice in respect of said defects, the examiner may make a decision of rejection.
The text of the decision of rejection shall include three parts: brief of the case, grounds for rejection, and conclusion.
The examination procedure of the rejected application shall be briefly described in the part of brief of the case, namely all of the ob- servations and the summaries of the responses from the applicant, the defects in the application which result in the rejection of the applica- tion and the text of the application upon which the rejection is based.
The part of grounds for rejection shall include the facts, grounds and evidence for rejection and the examinershall follow the below re- quirements:
(1)choose the provisions correctly. where the application may be rejected according to different provisions in the patent Law and its Implementing Regulations, the examinershall choose the most suit- able, leading provision as the main foundation for rejection, and simul- taneously indicate the other defects in the application briefly;and
(2)reject the application with compellent facts, grounds and evi- dence, and shall have notified the applicant of those facts, grounds and evidence, and have already gave the applicant at least one opportunity to make observations and/or amend the application documents.
The examinershall remark briefly on the argument of the appli- cantin the part of grounds for rejection.
The corresponding provisions of the patent Law and itsImple- menting Regulations which the patent application is contravening shall be clearly indicated in the part of conclusion with a statement that the patent application is rejected in accordance with Rule44 . 2 .
3.6 Interlocutory Examination and Handling after Reexamination
where an application is rejected for not in conformity with the provisions of the patent Law and its Implementing Regulations, the ap- plicant may, within the prescribed time limit, file areexamination request with the patent Reexamination Board if he is not satisfied with the decision of rejection. For the interlocutory examination for there- examination request and the handling after reexamination, the provisions of chapter8, section 8 of partⅡ of these Guidelines shall apply.
4. Examination of Application Documents
Article27 provides that, where an application for a patent for de- sign is filed,arequest, drawings or photographs of the design as well as a brief explanation of the design, etc. shall be submitted;therele- vant drawings or photographs submitted by applicantshall clearly indi- cate the design of the product for which patent protection is sought.
4. 1 Request
4. 1. 1 Name of Product Incorporating Design
The name of the product incorporating the design may explain the
category of the product as shown in the drawings or photographs. The name of the product incorporating the design shall be in accordance with the design as shown in the drawings or photographs and indicate the design for which protection is sought accurately and concisely.
The name of the productshall generally be in conformity with the name listed in the subclass of the International classification for Indus- trial Design. It shall generally contain no more than 20 chinese characters.
The use of the following names shall generally be avoided:
(1)names of product containing the name of a person,a place, a nation, an entity,a trademark,a code,a model or a historical age;
(2 )improper generic or abstract names, such as“stationery ”, “cooking utensils”,“musical instruments”,“articles for building ”, etc. ;
(3)names describing the internal structure, technical effect of the product, such as“oil-saving engine”,“human body height-increasing shoe-pad”,“automobile with newtype of engine”,etc. ;
(4)names with specification, size, scale or numerical unit of the product, such as“21-inch TV set”,“medium-sized bookshelf”,“one pair of gloves”,etc.;and
(5)names in foreign language or without specific meaning in chi- neselanguage, such as“kelaisi wine bottle”, but words well known and having specific meaning can be used, such as“DVD player”,”LED light”,“UsBline concentrator”,etc.
4. 1.2 creator
The provisions concerning the inventor of chapter1, section 4 .1 . 2 of this partshall apply.
4. 1.3 Applicant
The provisions of chapter1 , section 4 . 1 . 3 of this part shall apply.
4. 1.4 contact person
The provisions of chapter1 , section 4 . 1 . 4 of this part shall apply.
4. 1.5 Representative
The provisions of chapter1 , section 4 . 1 . 5 of this part shall apply.
4. 1.6 patent Agency and patent Agent
The provisions of chapter1 , section 4 . 1 . 6 of this part shall apply.
4. 1.7 Address
The provisions of chapter1 , section 4 . 1 . 7 of this part shall apply.
4.2 Drawings or photographs
Article59 . 2 provides that, the extent of protection of the patent right for design shall be determined by the design of the product as shown in the drawings or photographs. The brief explanation may be used to interpret the design of the product as shown in the drawings or photographs. Article27 . 2 provides that, the relevant drawings orpho- tographs submitted by applicantshall clearly indicate the design of the product for which patent protection is sought.
so faras the product with a three-dimensional design is con- cerned, if the essential features of the design of the product involve six sides, the applicantshall submit orthographic projection of six-side views;if the essential features of the design of the product involve the view of one side or several sides only, the applicantshall submit at least orthographic projection view and space diagram of the side con- cerned, and indicate the reason of the omission of the view in the brief explanation.
So faras the product with plane design is concerned, if the essen- tial features of the design of the product involve the view of one side only, the applicant may submit the orthographic projection view of the relevant side only;if the essential features of the design of the product involve the view of two sides, the applicantshall submit the ortho- graphic projection views of the two relevant sides.
The applicantshall also submit, if necessary, the exploded view, cutaway view, sectional view, enlarged view and view of state of vari- ation.
In addition, the applicant may submit the reference views. Refer- ence views are usually used to indicate the purpose of use, method or places of use of the product incorporating the design.
The colour includes black-white-grey series and multicolourse- ries. where an application for design has a declaration “seeking con- current protection of colour”in the brief explanation, the colour of the drawings shall be fast and not easy to fade.
4.2. 1 Titles of views and Marking Thereof
The titles of the six-side views are front view, back view, left view, right view, top view and bottom view. The side corresponding to the front viewshall be the side which faces consumers when in use or which can best show the overall design of the product. For exam- ple, the front view of a cup with a handleshall be the one where the handle is on the edge of the side.
The title of each view shall be indicated exactly under therele- vant view.
In respect of the product in set, Arabic numerals shall be marked before the titles of the views of each product with the word “item” placed before the numerals. For example, the title of the front view of the No. 4 item in the product set is“Item 4,Front view”.
In respect of two or more similar designs for the same product in one application, Arabic numerals shall be marked before the titles of the views of each product with the word “design”placed before the numerals. For example, the title of the front view of the No. 1 design in the application is“Design 1,Front view”.
combination product refers to a single product consisting of a number of components. It could be divided into assembled product with only one option of assembly, combination product needless of as- sembly or assembled product with more than one option of assembly.
In respect of the assembled product with only one option of assembly, views showing the state of combination shall be submitted;in respect of the combination product needless of assembly or assembled product with more than one option of assembly, views showing each compo- nentshall be submitted, and Arabic numerals shall be marked before the titles of the views of each component with the word “component” placed before the numerals. For example, the title of the left view of the No. 3 component of the combination product is“component3 ,
Left view”.
In respect of the product incorporating design with variations, the Arabic numbers shall be marked after the title of the view showing the state of variation in the patent application thereof.
4.2.2 Making of Drawings
The drawings shall be made in accordance with the provisions on normal projection, width of lines, and section mark of the state stand- ards of technical drawing and mechanical drawing. solid lines of even thickness shall be used to show the shape of the design. shadow lines, indicative lines, dotted lines, central lines, size lines, and dot- dash lines shall not be used to show the shape of a design. Two paral- lel double-dotted lines or natural geosutures can be used to show the o- mitted part of along and thin product. The indicative lines may be used to show the section place and direction, enlarged parts, and trans- parent parts without unnecessary lines and marks. The drawings shall show the design clearly.
The drawing may be drawn with the aid of drawing instruments including computer. pencil, crayon or ball-pen shall not be used.
Blueprint, sketching, mimeograph shall also not be used. where the drawing of the design is made with computer, its resolution shall meet the requirements of being distinct.
4.2.3 Taking of Photographs
(1)The photographs shall be clear, and avoid vagueness resulting from focusing problems, etc.
(2)The background of the photographs shall be plain, and avoid showing other contents except the product incorporating the design.
The product and the background shall have appropriate distinction in brightness to show the design clearly.
(3)The photographs shall betaken in conformity with the rules of exact projection and avoid distortion caused by perspective.
(4)The photographs shall avoid strong light, blinking, shadow, re- flection, etc.
(5)The product in the photographs should not be allowed to indi- cate generally accompanied with additional inside filling or liner, un- less the additional inside filling or liner must be kept in order to show the design clearly.
4.2.4 Defects of Drawings or Photographs
where the content of the drawings or photographs of a patent ap- plication has defects, the examinershall issue Notification to Make Rectification or office Action to the applicant. The amendments to the ap- plication for design made by the applicantshall not go beyond the scope of the disclosure as shown in the initial drawings or photographs according to the provisions of Article33 . The defects mentioned a- bove mainly refer to the followings:
(1)where the relation of projection of the views is wrong, for ex- ample, the relation of projection is not in conformity with the rules of exact projection, corresponding projection relation among the views lacks, or the direction of the view is upside down;
(2)where the content of the design cannot be correctly expressed because the drawings or photographs are not clear enough, or the size of the figure of product as shown in the drawings or photographs is too small, or there is strong light, blinking, shadow, reflection, inside filling or liner which makes the design indicated incorrectly though the figure is clear;
(3)where, in the drawings of the design, there are lines to show the product which shall be deleted or amended, such as a shadow line, indicative line, dotted line, central line, dimension line, or dot-dash line, and so on;
(4)where the views of a three-dimensional product has any of the following circumstances:
(i)the scale of the various views is not the same;and
(ii)where the essential features of the design of the product involve six sides, there are no six-sided views, however, with the follow- ing exceptions:
the back view may be omitted if it is identical or symmetrical with the front view;
the left view(or the right view)may be omitted if it is identical or symmetrical with the right view(or the left view);
the top view(or the bottom view)may be omitted if it is identical or symmetrical with the bottom view(or the top view);
the bottom view may be omitted in the case of the large-scale ap- paratus, or apparatus with fixed position or the articles with bottoms not often be seen;
(5)where the view of a product with plane design has any of the following circumstances:
(i)the scale of various views is not the same;and
(ii)the essential features of the design of the product involve two
sides, but there are no two-sided views, except that the back view is i- dentical or symmetrical with the front view or there is no pattern in back view;
(6)where, in the case of along and thin product, such as the measuring rule or section bar, the middle part of the product is omitted in the drawing,but the double parallel two-dot dash lines or natural geosutures are not used;
(7)where the section and the section surface of the sectional view or sectional surface view has any of the following circumstances:
(i)no section line or the section line is incomplete;and
(ii)the line, symbol and direction showing the place of section are
incomplete or absent(however,it is not necessary to indicate the mark to show the cut-off from the central part) .
(8)where there is an enlarged view of a certain part but the posi- tion of that enlarged part in the relevant drawing is not indicated;
(9)where an assembled product with only one option of assembly lacks the corresponding views showing the state of combination;a combination product needless of assembly or an assembled product with more than one option of assembly lacks necessary views of each component;and
(10)where the outer layer and inner layer of the design of trans- parent articles have two or more shapes, patterns and colours that are not expressed separately.
4.3 Brief Explanation
Article59 . 2 provides that, the extent of protection of the patent right for design shall be determined by the design of the product as shown in the drawings or photographs. The brief explanation may be used to interpret the design of the product as shown in the drawings or photographs.
According to Rule28,a brief explanation shall include the fol- lowing contents:
(1)the title of the product incorporating the design. The title of the product indicated in the brief explanation shall be in accordance with the title of the product in the request;
(2)the use of the product incorporating the design. The use of the product which is helpful to ascertain the classification shall be indi- cated in the brief explanation. As regards product has multiple uses, the multiple uses shall be indicated in the brief explanation;
(3)the essential features of the design. The essential features mean that the shape, pattern or their combination, or the combination of the colour with shape or pattern, or the position, which is different from prior design. The description of the essential features shall be compendious;and
(4)which drawing or photograph is designated to best show the essential features of the design. The designated drawing or photograph is used for the publication in the patent Gazette.
Furthermore, the following contents shall be indicated in the brief explanation:
(1)protection for colour is claimed or a view is omitted.
where protection for colour is sought in a design patent applica- tion, it shall be claimed in the brief explanation.
where a view of the product incorporating the design is omitted, the applicantshall generally indicate the reason of the omission of the view, such as aview is omitted because it is symmetrical or identical with another view;if it is hard to indicate the reason, may only indi- cate the view which is omitted, for example,a large-scale apparatus lacks bottom view, it may be described as“bottom view is omitted”.
(2)where an application for a patent for design is filed relating to several similar designs of the same product, one of the designs shall be designated as the main design in the brief explanation.
(3)as regards plane product such as printed cloth, wallpaper, shall describe the unit pattern of the plane product which is connected in two sides or four sides and has no fixed limits if necessary.
(4)as regards along and thin product, shall indicate the length is omitted in the drawings or photographs if necessary.
(5)where the product incorporating the design is made of trans- parent material or new material which creates special visual effect, it shall be indicated in the brief explanation if necessary.
(6)where the design product is a product in set, the names of the items in the product set shall be indicated if necessary.
The brief explanation shall contain no language of commercial advertisement, and shall not be used to show the function of the prod- uct.
5. Examination of other Documents and Relevant Formalities
5.1 Appointment of Patent Agency
The provisions of chapter1 , section 6 . 1 of this partshall apply.
5.2 Claiming Right of Priority
where the applicant claims priority, the provisions of Articles29 .
1 and 30, Rules31 and 32 . 1, and the relevant provisions of the paris convention shall apply.
In accordance with Article29 . 1, only foreign priority may be claimed for a patent application for design, that is, where, within six months from the date on which any applicant first filed in a foreign country a patent application for design, if he files in china a patent ap- plication for the same subject matter, he may, in accordance with any agreement concluded between said foreign country and china, or in ac- cordance with any international treaty to which both countries are par- ty, or on the basis of the principle of mutual recognition of the right of priority, enjoy a right of priority.
According to Rule31 . 4, where the applicant of an application for a patent for design claims a foreign priority, if the earlier application does not include any brief explanation of the design, and if the brief explanation filed by the applicant in accordance with the provision of Rule28 of these Implementing Regulations does not go beyond the ex- tent of protection determined by the drawings or photographs of the earlier application documents, the priority will not be affected.
In accordance with Rule32 . 1, the applicant may claim one or multiple priorities in one patent application for design.
During the preliminary examination of an application claiming multiple priorities, each priority shall be examined for its compliance with the relevant provisions of this chapter.
5. 2. 1 Earlier Application and subsequent Application claiming priority
The provisions of chapter1, section 6 . 2 . 1 . 1 of this partshall apply.
5.2.2 Declaration of claiming priority
The provisions of chapter1, section 6 . 2 . 1 . 2 of this partshallapply.
5.2.3 copy of Earlier Application Document
The provisions of chapter1, section 6 . 2 . 1 . 3 of this part shall apply.
5.2.4 Applicant of subsequent Application
The provisions of chapter1, section 6 . 2 . 1 . 4 of this part shall apply.
5.2.5 Withdrawal of claim to the Right of priority
The provisions of chapter1 , section 6 . 2 . 3 of this part shall apply.
5.2.6 Fee for claiming priority
The provisions of chapter1 , section 6 . 2 . 4 of this part shall apply.
5.2.7 Restoration of claim to the Right of priority
The provisions of chapter1 , section 6 . 2 . 5 of this part shall apply.
5.3 Non-prejudicial Disclosures
The provisions of chapter1 , section 6 . 3 of this part shall apply.
5.4 Declaration of Withdrawing patent Application
The provisions of chapter1 , section 6 . 6 of this part shall apply.
5.5 changes in Bibliographic Data
The provisions of chapter1 , section 6 . 7 of this part shall apply.
6. Examination According to Article5.1 and Article25.1(6)
6. 1 Examination According to Article5. 1
Article5 . 1 provides that no patent rightshall be granted for any invention-creation that is contrary to the laws or social morality or that is detrimental to public interest.
The examinershall, according to the relevant provisions of chap- ter 1, section 3 of partⅡ of these Guidelines, examine whether or not the design applying for a patent is obviously contrary to the laws, whether or not it is obviously contrary to social morality, and whether or not it is obviously detrimental to public interest.
6. 1. 1 contrary to the Laws
To be“contrary to the laws”refers to that the contents of a patent application for design have violated the laws formulated and promulga- ted by the National people,s congress or the standing committee of the National people,s congress according to the legislative procedure.
For example,a design of the bed sheet containing the pattern of Renminbi shall not be granted the patent right because it is contrary to the Law of the people,s Republic of china on the people,s Bank of china.
6.1.2 contrary to social Morality
The social morality refers to ethic or moral concepts and stand- ards of behavior generally believed to be appropriate and accepted by the public. Based on a given cultural background, what the social mo- rality covers constantly changes with the progression of time and the progress of the society, and varies in different regions. The social mo- rality mentioned in the patent Law of china is limited in china. For example, designs containing drawings or photographs of violence, mur- der, and pornography shall not be granted the patent right.
6. 1.3 Detrimental to Public Interest
To be“detrimental to public interest”refers to that the exploita- tion or use of the design may harm the interests of the public or socie- ty, or may affect the normal order of the state and society.
where the words or patterns of the design in a patent application relate to a major national political, economical or cultural event, or religious belief and consequently is detrimental to public interest, hurts the feeling of the people or the nation, propagates feudalism and super- stition, or cause detrimental political impact, no patent rightshall be granted to that application.
A design containing a famous building (e. g. , the Tian, anmen Gate)or the portrait of a national leadershall not be granted the patent right.
Any design that takes chinese national flag or chinese national emblem as the pattern shall not be granted the patent right.
6.2 Examination According to Article25.1(6)
Article25 . 1 (6 )provides that, for designs of two-dimensional printing goods, made of patterns, colours or their combination, which serve mainly as indicators, no patent rightshall be granted. According to the provision of Rule44 . 1(3), whether or not any application for a patent for design obviously falls under Article25 . 1 (6 )of the patent Lawshall be examined during the preliminary examination of the de- sign patent application.
where an application for a patent for design meets the following three requirements, the application falls under Article25 . 1 (6)and no patent rightshall be granted:
(1)the product for which the design is applied is a plane printed matter;
(2)the design is made of patterns, colours, or their combination; and
(3)the design serves mainly as indicator.
when examine the design patent application according to the mentioned provisions above, the examinershall first examine, based on the drawings or photographs and the brief explanation, whether the product incorporating the design is a plane printing goods. secondly, the examinershall examine whether the design is made of patterns, colours, or their combination. As the shape element is not considered, thus, designs of all the two-dimensional printing goods may be deemed as designs made of patterns, colours, or their combination. Thirdly, the examinershall examine whether the design serve mainly as indicator. “serve mainly as indicators”means that the main purpose of the de- sign is to help the public identify the related product, the origin of the service, etc.
wallpapers, textiles are not the subject-matters that excluded by this provision.
7. Examination According to Article2.4
In accordance with the provisions of Article2 . 4,“design”in the patent Law means any new design of the shape, the pattern or their combination, and the combination of the colour with shape or pattern,
of a product,which creates an aesthetic feeling and is fit for industrial application.
7. 1 The carrier of a Design Must be a product
Adesign is the design of a product. The carrier of a design must be a product. Handicrafts, agricultural products, livestock products or natural products, which cannot be produced repeatedly, shall not be the carrier of the design.
7.2 shape, pattern, or Their combination, combination of colour with shape and/or pattern
what constitute a design are the design elements or their combi- nation of a product, including the shape, the pattern or their combina- tion and the combination of the colour with shape or pattern. The col- our of a product alone cannot constitute a design unless the change of the colour of a product constitutes a pattern. The combinations that may constitute a design include:the shape of a product;the pattern of a product;the shape and pattern of a product;the shape and colour of a product;the pattern and colour of a product;the shape, pattern and colour of a product.
“shape”refers to the design of the molding of a product, that is, the external outline of a product presented by the move, change or combination of the dot, line or side of the external part of the product.
That is the result of the synchronal design, manufacture of the struc- ture, external shape and so on of a product.
“pattern”refers to the figure constituted on the surface of the product by means of the arrangement or combination of the line, char- acter, symbol or colour piece. pattern may be created by drawing or other means which is able to embody the designing conception of the creator. The pattern of a productshall be permanent and visible, and not flickering or visible only under specific conditions.
“colour”refers to the colour or combination of colours applied on the product. The natural colour of the raw material appeared on a product is not the colour of the design.
The three elements, that is, shape, pattern and colour are inter-de- pendent, and sometimes it is difficult to define their boundary. For ex- ample, the arrangement of many colour pieces may constitute a pat- tern.
7.3 Aesthetic New Design Fit for Industrial Application
To be“fit for industrial application”refers to a design which may be used in industry and may be manufactured in batches.
“Aesthetic”means that when judging whether the subject matter is patentable, the visual sensation of the appearance of the product shall betaken into consideration, but not the function or technical effect of the product.
Article2 . 4 is the general definition of a design which may obtain the patent protection. It is not the specific examination standard for determining whether designs are identical or substantive identical. As a result, during the preliminary examination, the examiner normally de- termines whether the claimed design meets the general requirements of “new design”only on the basis of the contents of the application docu- ments and the common sense of the normal consumers.
7.4 Nonpatentable situations for Design for Patent
According to Article2 . 4, the following situations are ineligible for patent protection for design:
(1)any fixed building, bridge and the like which depends on their specific geographic conditions and cannot be rebuilt elsewhere, such as villa built by a particular lake or hill;
(2)any product which has no fixed shape, pattern or colour be- cause it contains the substance which has no fixed shape, such as gas, liquid or powder;
(3 )any component part of the product which cannot be parti- tioned or sold and used independently, such as the heel of socks, the peak of a hat,the handle of a cup, and so on;
(4)in the case of any product consisting of several component parts which have different shape or pattern, if each component part it- self cannot be sold and used independently, such component part is not the subject matter under protection of the patent for design. For exam- ple,a jigsaw toy consisting of plug-in pieces of varied shape is apa- tentable subject matter only when one application relating to all the pieces is filed;
(5)any product which cannot be perceived by the visual sense or be determined with the naked eye, and the shape, pattern or colour of which has to be distinguished by means of specific instruments, for ex- ample,a product whose pattern is only visible under an ultraviolet lamp;
(6)any design for which the protection is sought is not the design of the state of normal product, for example the design of the state of an animal made with a handkerchief;
(7)any design of which the main portion is the original shape, pattern or colour of the natural object, such design normally includes two situations, the natural object itself and the imitational design of the natural object;
(8)any work which belongs wholly to the field of fine arts, pen- manship or photography;
(9)any design which is constituted only by geometric shapes or patterns of common sight in the field of the relevant product;
(10)the pronunciations or meanings of the words and numerals shall not be the contents of design protection;and
(11)the pattern shown when the product is electrified, such as the pattern on the electronic watch dial, the pattern on the screen of the mobile phone, software interface, and so on.
8. Examination According to Article23. 1
During the preliminary examination, the examiner usually does not conduct search and normally judges whether the design application obviously does not meet the requirements of Article23 . 1 only on the basis of the content of the application document and common sense of the normal consumer.
The examiner, however, may judge whether the design obviously does not meet the requirements of Article23 . 1 on the basis of the in- formation,which is not resulted from search, concerning prior design or conflicting application.
when examining design relating to abnormal filing, among other things, obviously plagiarizing prior design or prior application with substantially identical content, the examinershall judge whether the de- sign obviously does not meet the requirements of Article23 . 1 on the basis of prior design document resulted form search or information ob- tained through other channels.
Examination regarding identical or substantially identical designs shall follow provisions in chapter5 of part IVof these Guidelines.
9. Examination According to Article31.2
Article31 . 2 provides that an application for a patent for design shall be limited to one design. Two or more similar designs for the same product or two or more designs which are incorporated in prod- ucts belonging to the same class and sold or used in sets may be filed as one application (combination application for short).
9. 1 Two or More similar Designs of the same Product
According to Article31 . 2, two or more similar designs for the same product may be filed as one application.
No more than 10 similar designs in one application may be claimed. If more than 10 similar designs in one application have been claimed, the examinershall issue the office Action. If the applicant fails to overcome the defect after amendments, the application shall be rejected.
9. 1. 1 same Product
According to Article31 . 2, each design shall be of the same prod- uct, for example,designs of dinner plate. If the designs are for dinner plate, saucer, cup and bow respectively, though they are under the same class,they do not belong to the same product.
9. 1.2 similar Designs
According to Rule35 . 1, the other designs for the productshall be similar to the main design designated in the brief explanation.
when judging similarity of designs, the examinershall compare the other designs with the main design respectively.
when an application involves similar designs during preliminary examination, the application shall be examined whether the design ob- viously does not meet the requirements of Article31 . 2 . Normally through overall observation, if the other designs and the main design have same or similar design features, and if the difference between them lies in slight changes in some fine details, usual design of this category of the products, the repeated and continuous arrangement of a design unit or mere change of colour element, they are considered as similar designs.
9.2 Designs of Products in set
According to Rule35 . 2, products which belong to the same class and are customarily sold or used at the sametime, and the designs of which have the same concept of design, may be filed in one applica- tion.
products in set means that two or more products belonging to the same class, but independent from each other. The design concept for the products are the same. Each product has its own independent value of use while the combination of them reflects collective value of use, for example,a coffee set consisting of coffee cup, coffeepot, milk pot and sugar pot.
9.2. 1 same Class
According to the provisions of Article31 . 2 and Rule35 . 2, one of the conditions for two or more designs to be filed in one application is that said two or more designs are incorporated in products belonging to the same class, that is, the products belonging to the same class in the International classification for Industrial Designs.
It shall be noted that products being in the same class is not the only condition for two or more designs being filed in one application, the requirements concerning being sold or used in set and having the same design concept as provided for in Article31 . 2 shall also be com- plied with.
9.2.2 sold or used in set
“Being sold or used at the sametime”provided in Rule35 . 2 means that the products incorporating the designs are customarily sold or used at the sametime and have collective value of use.
(1)sold at the sametime
“Being sold at the sametime”means that the products incorpora- ting the designs are customarily sold at the sametime, such as the mul- tiple-piece bedding consisting of bedspread, sheet, pillowcase and the like. The products which are sold together for the purpose of promo- tion cannot be filed as a set of products, such as a schoolbag and a pencil box. Although a pencil box will be given as a gift when a schoolbag is sold, they cannot be regarded as having been customarily sold together at the sametime and they cannot be filed as a set of products.
(2)used at the sametime
“used at the sametime”means that the products are customarily used at the sametime. Namely, when people use one product of the set, they often associate it with the existence of other products of the set. However, it does not necessarily mean use of the products of the set at the same moment, such as the case with coffee cup, coffeepot, sugar pot and milk pot of the coffee utensils.
9.2.3 various Products Having same Design Concept
“same concept of design”refers to the unity of the style of de- sign of each product. That means the design of the shape, pattern or their combination, or the combination of the colour with shape or pat- tern of each product is unified.
The unity of the shape means that each component product is characterized by a specific molding, or the combination relation be- tween the component products is constituted on the basis of a specific molding. under such circumstances, the products shall be regarded as being in conformity with the unity of the shape.
The unity of the pattern means that the design of the pattern and its subject matter, composition, form of expression, and so on, of each productshall be unified. If one aspect of them is different, the pattern of the products shall be regarded as not unified. For example, where the subject matter of the design of the coffeepot is orchid, while the subject matter of the design of the coffee cup is a panda, since these- lected subject matters of design are different, the patterns are not uni- fied, the principle of unity and coordination is not complied with, and hence, they cannot be filed in one application.
The unity of the colour cannot be considered alone. It must be considered comprehensively with the shape and pattern of each prod- uct. where the shape, pattern of each product complies respectively with the principle of unity and coordination, if the statement of“see- king protection of colour”is not made in the brief explanation, the de- sign concepts are the same;if the statement of“seeking concurrent protection of colour”is made in the brief explanation, and the style of the colour of the products is unified, the design concepts are the same; if the colour of each component product is quite different and the har- mony of the entirety is damaged, the designs shall not be filed in one application.
9. 2.4 Products in set shall Not Include similar Designs
Design patent application of products in set shall not include simi- lar designs of one or more products. For example,a design patent ap- plication of products in set including dinner cup and saucershall not involve two or more similar designs related to said cup and saucer.
where the application is found to be not in conformity with said requirements, the examinershall issue the office Action to invite the applicant to make amendments.
9. 3 Designs united in one Applicationshall Respectively Meet the Requirements for Being Granted a Patent Right
It shall be noted that either two or more similar designs of the same product or a patent application for design in respect of a set of products, each design or design of each product, in addition to compli- ance with the relevant requirements concerning combination applica- tion mentioned above, shall respectively comply with the other require- ments of granting. If one design or one design of one product fails to comply with the requirements, the design or the design of the product shall be removed, or the patent application shall not be granted a patent right.
9.4 Examination on Divisional Application
9.4. 1 verification of Divisional Application
The provisions of chapter1 , section 5 . 1 . 1 of this partshall ap-
ply.
9.4.2 other Requirements for Divisional Application
(1)where the initial application contains two or more designs, the design of the divisional application shall be one or more of the designs taken out from the initial application and shall not go beyond the scope of the disclosure as shown in the initial application.
(2)where the design of the initial application is a design of the whole product, the applicant is not allowed to take only part of the product out of the design as the subject matter of the divisional appli- cation. For example, where a patent application is filed to protect the design of a motorcycle as a whole, no divisional application may be made for the design of its spare parts or components.
where a divisional application is found not to be in conformity with the requirement of item (1), the examinershall issue the office Action and invite the applicant to make amendments. where no re- sponse is made within the time limit, the examinershall issue Notifica- tion that Application Deemed to be withdrawn. where the applicant re- fuses to make amendments without sufficient reason, the examiner shall make adecision to reject the divisional application. where the application is found to be not in conformity with the requirement of item (2), the examinershall issue the office Action. If no response is made within the specified time limit, the examinershall issue Notifica- tion that Application Deemed to be withdrawn. where the applicant in- sistson filing a divisional application without sufficient reason, the ex- aminershall make a decision to reject the divisional application.
9.4.3 Time Limit and Fees for Divisional Application
The provisions of chapter1 , section 5 . 1 . 2 of this partshall ap- ply.
10. Examination According to Article33
In accordance with the provisions of Article33,the amendment made by the applicant to the patent application for design may not go beyond the scope of the disclosure as shown in the initial drawings or photographs. “The amendment goes beyond the scope of the disclosure as shown in the initial drawings or photographs”means that the design after amendment and the corresponding design disclosed in the initial application documents are not the same.
when judging whether the amendment made by the applicant to his patent application goes beyond the scope of the disclosure as shown in the initial drawings or photographs, if the content after amendment has been shown in the initial drawings or photographs, or can be determined directly and unambiguously therefrom, the amend- ment is considered in conformity with Article33 .
The applicant may amend the patent application documents for design on his own initiative within two months from the date of filing.
Furthermore, upon the receipt of the office Action or Notification to Make Rectification the applicantshallamend the patent application doc- uments in response to the defects pointed out in the notification.
10. 1 Amendment Made by Applicant on His own Initiative
with regard to the amendment made by the applicant on his own initiative, the examinershall first examine whether or not the date of a- mendment is within two months from the filing date. with regard to the amendment made two months later, if the amended documentso- vercome the defects existing in the initial application documents, and have the prospect of being granted the patent, the amended documents may be accepted. with regard to the amended documents which can- not be accepted, the examinershall issue Notification that Amendments Deemed Not to Haue Been submitted.
with regard to the amendment made by the applicant on his own initiative within the two months, the examinershall 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 examinershall issue the office Action to notify the applicant that the amendment is not in conformity with the provisions of Article33 . If the amendment is still not in conformity with the pro- visions after the applicant makes observations or rectification, the ex- aminer may make a decision of rejection according to the provisions of Article33 and Rule44 . 2 .
10.2 Amendment in Response to Defects Pointed out in Notifica- tion
with regard to the amendment in response to defects pointed out in the notification, the examinershall examine whether or not the a- mendment goes beyond the scope of the disclosure as shown in the ini- tial drawings or photographs, and whether or not it is in response to the defects pointed out in the notification. with regard to the amended document filed by the applicant including the amendment not in re- sponseto defects pointed out in the notification, if the amendment is in conformity with the provisions of Article33, and overcomes defect in the original application document and the application has prospect of being granted, the amendment may be considered as the amendment in response to defects pointed out in the notification, the amended appli- cation documentshall be accepted. If the amendment goes beyond the scope of the disclosure as shown in the initial drawings or photo- graphs, the examinershall issue the office Action to notify the applicant that the amendment is not in conformity with the provisions of Article33 . If the amendment is still not in conformity with the provi- sions after the applicant makes observations or rectification, the exam- iner may make a decision of rejection according to the provisions of Article33 and Rule44 . 2 .
10.3 Amendment Made by Examiner Ex officio
During the preliminary examination, the examiner may amend ex officio the obvious defects in the documents of the patent application mentioned in sections4 . 1 , 4 . 2 and 4 . 3 of this chapter, and notify the applicant accordingly. The contents which may be amended ex officio by the examiner mainly refer to the following:
(1)obvious mistake in the name of the product;
(2)obvious mistake in the title of the view;
(3)obvious mistake in the direction of the view;
(4)the lines describing the product in the drawings include lines which shall be deleted, such as shadow lines, indicating lines, central lines, dimension lines, dotted lines, etc. ;
(5)the descriptions in the brief explanation are obviously not the contents which may be allowed therein. For example, description of the internal structure, description of technical effect, or words concern- ing promotion and advertising of the product;
(6)the drawing or photograph in the brief explanation designated by the applicant to best show the essential features of the design is ob- viously improper;and
(7)missing, misspelling and repeating of province(autonomous region and municipality), city, postal code and other information con- cerning the address of applicant or contact person in the request.
The contents which are amended ex officio by the examinershall be recorded in the file and be notified to the applicant.
11. Examination According to Article9
In accordance with Article9 . 1, for any identical invention-crea- tion, only one patent rightshall be granted. According to Article9 . 2 , where two or more applicants file applications for patent for the identi- cal invention-creation, the patent rightshall be granted to the applicant whose application was filed first.
During the preliminary examination of a patent application for de- sign, the examiner normally does not take the initiative to search and examine as to whether or not a patent application for design can be granted the patent right according to the provisions of Article9 . How- ever, where the examiner knows that one or more applicants have filed patent applications for the identical design, the examination shall be conducted.
11. 1 Principles of Judgment
In the judgment of whether or not two or more designs constitute “identical invention-creation”stated in Article9, it shall be determined on the basis of the designs of the products as shown in the drawings or photographs of the two patent applications for design or patents for de- sign. Identical designs mean that the two designs are identical or sub- stantially identical. In respect of the judgment principles of the identi- cal or substantially identical designs, the provisions of chapter5 of part IVof these Guidelines shall apply.
11.2 Method of Handling
The provisions of chapter3, section 6 . 2 of partⅡ of these Guidelines shall apply.
12. Classification of Design
The patent Office uses the International classification for Indus- trial Designs(Locarno classification)to classify patent applications for design. The latest published chinese version of the International clas- sification for Industrial Designs is the working document.
The objectives of design classification is to:
(1)determine the category of product incorporating the design;
(2)manage design patents by categories;
(3)enable search of design patents;and
(4)compile and publish design patent documents according to se- quence of classification number.
classification of design is working on product incorporating the design. A classification number consists of LOc(version number), cl. and class number-subclass number(classification numbers refer- ring below are class number-subclass number), for example LOc(9 ) cl.06-04 . In the case of multiple classification numbers, each classifi- cation number is separated by a semicolon, for example LOc(9 )cl. 06-04; 23-02 .
12. 1 Basis of classification
classification of design is on the basis of the name of the prod- uct, drawings or photographs and the use of the product stated in the brief explanation.
12.2 Methods of classification
classification of design normally follows the principle of purpose of use, disregarding the material making the product. The use of the product may be known from name of product, drawings or photo- graphs, intention of use of the product, field of use, method of use and other information provided by the applicant.
Determination of classification shall go by the order of class and then subclass. The classification of a product incorporating design shall belong to a class including its purpose of use and a subclass un- der the class. If there is no subclass including the purpose of use of the product under the class, the productshall be classified in subclass 99 under the class, namely miscellaneous.
with regard to component of a product, if there is a specific class, it shall be classified in that specific class. For example, tires of automobiles shall be classified into 12-15 . If there is no specific class and the component does not belong to other products, it shall be classi- fied into the class to which its higher-hierarchy product belongs to, for example,flint wheel of lighter shall be classified into 27-05 . Determi- ning whether there are specific classes for the components of product shall not be limited to matching with specific product items in the clas- sification table, for example, outer shell of counterfeit money detector shall be classified into 10-07 .
with regard to products with new use derived from develop- ments, the productshall remain in the class of its traditional use. For example, lantern, though it has evolved from mere lighting device to ornamental product, it shall still be classified into class26,lighting de- vices.
12.3 Determination of the class and subclass Numbers
12.3. 1 classification of Product of single use
(1 )where a design application includes only a design of one product and the product has a single use, one class and subclass number shall be accorded.
(2)where a design application includes multiple designs of the same product and the product has a single use, one class and subclass number shall be accorded.
(3)where a design application includes designs of multiple pro- ducts and the products have the same and single use. For example, one design patent application includes three pieces of bedding products, pillowcase, bedspread and quilt cover, the classification number shall be 06-13 .
12.3.2 classification of Product of Multiple uses
(1)where a design application includes a design of one product and the product is a combination of products of two or more different uses, multiple classification numbers consistent with these uses shall be accorded, except for combination of furniture. For example,a photo frame with a thermometer has two uses in measuring temperature and placing photo, its classification numbers shall be06-07 and 10-04 . An- other example,a desk-chair is a combination of furniture, its classifica- tion numbershall be06-05 .
(2)where a design application includes multiple designs of the same product and the product is a combination of products of two or more uses, multiple classification numbers consistent with these uses shall be accorded.
(3)where a design application includes designs of multiple pro- ducts and each product has a different use, multiple classification num- bers consistent with these uses shall be accorded. For example,a de- sign patent application includes two products in bowland spoon, its classification numbers shall be07-01 and 07-03 .
12.3.3 Notification to Rectify in classification Procedure
In accordance with Rule28, the brief explanation shall state the use of the product incorporating the design.
where the follow circumstances occur during classification proce- dure, Notification to Rectify shall be issued:
(1)the use of the product cannot be determined according to the name of product, drawings or photographs of the design and there is no statement about the use of the product in the brief explanation or the statement is not clear;and
(2)the use of the product determined from the name of product,drawings or photographs of the design is obviously not in conformity with that stated in the brief explanation.
Applicantshall respond within two months after the receipt of the notification, furnishing the replacement sheet of the brief explanation of the design. The application will be deemed withdrawn where response could not be made after expiry of the above time limit.
