Design patents are increasingly becoming an essential component of our clients’ China IP portfolios. They’re reasonably priced, don’t take that long to acquire, and provide pretty good protection.
That said, it’s important to understand the limitations of a design patent. A design patent does not provide protection for a product’s functionality or inner workings. It does not protect a product’s manufacturing process. It does not even protect the materials or components used in a product. The only thing a design patent protects is the external appearance of a product. For this reason, the application for a design patent is short and sweet, with the substantive parts limited to orthographic drawings of the design and a brief description.
The main reason design patents can be acquired with relative ease in China is that they are not substantively examined. China’s State Intellectual Property Office (SIPO) only examines design patent applications to confirm that the drawings and description meet formal requirements, i.e., adequately describe the design. SIPO does not search to see if the design is the same as or similar to prior art. That sort of examination only takes place if the design patent is challenged.
Like other patents, design patents in China have a requirement of absolute novelty. If you have already disclosed or commercialized a product anywhere in the world, it is not eligible for design patent protection in China. This is a marked difference from trademarks, which can be registered at any time regardless of when use actually began. To be sure, it’s almost always a good idea to file a trademark as soon as possible, even before use –- it’s just not legally required. Design patents are also different from copyrights, which are protected at the time of creation even if they’re never registered. This disjunction can be confusing, especially when aspects of a design could (theoretically) be covered by multiple forms of IP. For certain products, the appearance of the product itself may be protectable under trademark, copyright, and patent regimes. That is rare, but it can happen and it lulls some of our clients into forgetting that though they are legally allowed to wait on filing a trademark or copyright (no matter how often we tell them not to wait) if they wait too long to file a patent they may be legally barred.
Once our clients are ready to move forward with a design patent application, we send a list of questions pretty much as follows:
1. Please provide the name and passport number (if not a PRC citizen) or national ID number (if a PRC citizen) of the person who designed the product. If you commissioned a design firm, then the name should be that of the person at the design firm.
2. Please provide the priority date, if relevant. You would only have a priority date if you had filed a patent application in the US (or some other jurisdiction) for this design in the past 6 months.
3. If you have filed a previous application in another jurisdiction, we will need a copy of the filing documents.
4. Please provide a set of formal drawings for the design. Assuming that you want the design patent to cover all sides of the product, then we’d need an orthographic projection of all sides (usually 6 sides: top, bottom, left, right, front, back). The drawings cannot contain dotted or dashed lines, or shading to indicate perspective.
5. Please provide a brief (one-paragraph) description of the name and use of the product incorporating the design and the essential features of the design.
Like I said, short and sweet.