Our China IP lawyers have lately been seeing a steady increase in China design patent filings, as Western companies increasingly come to understand the need to be proactive in protecting their IP from China. We file most design patents to protect product designs, but some are filed for defensive purposes. The defensive design patents are filed not so much to protect the filer’s own design, but to prevent Chinese companies from securing and using China design patents to block Western companies from selling in China or even exporting from China.
When called on to file a China design patent, our China attorneys typically request the following information for the filing:
1. The name and passport number (if you are not a PRC citizen) or your national ID number (if you are a PRC citizen) of the person who designed the product for which you are seeking the China design patent. If you commissioned a design firm who actually designed the product, the name should be that of the person at the design firm.
2. The priority date, if relevant. You would only have a priority date if you filed for a design patent application for this design in a jurisdiction other than China in the past 6 months.
3. If you previously filed a design patent application in a jurisdiction other than China, please send us a copy of the filing documents.
4. A set of formal drawings for the design. Assuming you want the China design patent to cover all sides of you product, we need need an orthographic projection of all sides — usually this means six sides: top, bottom, left, right, front, back, plus a perspective graphic. The drawings cannot contain dotted or dashed lines, or shading to indicate perspective.
5. A brief (one-paragraph) description of the name and use of the product incorporating the design, and the essential features of the design.
Note that China design patents require absolute novelty. This means if you have already disclosed or commercialized this product anywhere in the world, it is not eligible for design patent protection in China. That said, if you already filed for a design patent in a Paris Convention country (which includes almost every country in the world) you may be able to file for a design patent in China on a priority basis and claim the earlier-filed date as the effective filing date for your China application.
Once we collect the above information, we will review it and then set it up for a design patent filing in China. That’s pretty much it — there will be no substantive check by the China patent authorities for prior art or anything else. The only time the China patent office substantively reviews design patents are when they are challenged for validity.
For more on China design patents, check out the following:
- The ABCs of China Design Patents
- China Co-Development and Design Patents
- Protecting Your Product From China: The 101
