If you’ve had any experience with filing Chinese multiple design patents, or any Chinese design patent for that matter, you’ll no doubt have experienced frustration and confusion.
This guide should hopefully give you some useful tips to optimise your design filing strategy in China and minimise the chances of an objection or refusal.
Permitted multiple designs
Article 31(2) of the Patent Law of the People’s Republic of China states:
An application for a design patent shall be limited to one design. Two or more similar designs of one and the same product or two or more designs of products of the same kind that are sold or used in sets may be handled with one application.
So, a Chinese multiple design patent application can include either:
1. two or more similar designs of one and the same product; or
2. two or more designs of product of the same kind that are sold or used in sets.
Accordingly, there are two types of multiple (or combination) design patent applications permissible in China.
However, for an application relating to two or more similar designs of one and the same product, the total number of designs that may be included is limited to 10.
1. Similar designs of the same product
There is no specific definition as to what constitutes “similar designs” so it’s left to the examiner to make a judgement. Generally speaking, two or more designs must share a high degree of similarity to avoid objection.
The Guidelines indicate that two or more such designs will be considered similar if they only differ in fine details, features commonly found in the products in question, the repeated and continuous arrangement of a design unit, or mere differences in colours.
As for “same product”, this is pretty self-explanatory but, for the avoidance of any doubt, for this type of Chinese multiple design patent application, the designs must be for the exact same product e.g. spectacles. This is in contrast to other jurisdictions, such as the EU, in which multiple design filings may be filed for designs relating to products falling within the same Locarno Class regardless of whether or not they form a set e.g. spectacles and binoculars.
2. Designs of products in sets
For a Chinese multiple design patent for a set of products, the products must satisfy the following criteria:
- belong to the same Locarno Class;
- have the same design concept; and
- be sold or used at the same time.
A classic example of a set of products is a coffee cup, coffee pot, milk pot and sugar pot.
Having the same design concept refers to the unity of style of the design of each product in a set. In other words, the design of each product in terms of the shape, pattern or their combination, or the colour with shape or pattern of each product, must be unified. As with “similar design” this is quite subjective with no precise definition and will be judged by the examiner.
In terms of shape, this means that each product is characterised by a specific moulding or that their relationship is based on a specific moulding.
As for pattern, this generally means that the subject matter, composition or form of expression is unified. if one aspect is different, two products will not be considered to have the same design concept. For example, if a coffee pot features the pattern of an orchid, and a coffee cup features the pattern of a panda, since the subject matter is different, the patterns will not be considered unified and the two products may not form a set for the purposes of Chinese multiple design patent protection.
If colour is claimed as a feature of the design, it must be considered in combination with shape and/or pattern. If the shape and/or pattern meet the unity requirement but the colours are so different that the harmony between the products is adversely affected, the products may not be considered to satisfy the same design concept criteria.
Being sold at the same time means that the products are customarily sold at the same time. The Guidelines provide the example of a multi-piece bedding set consisting of bedspread, bed sheet, and pillow case. However, just because two products are sold together does not necessarily mean they will be regarded as being customarily sold together. For example, a rucksack and promotional pencil case may be sold together, but will not be regarded as customarily sold together and, hence, will not be regarded as forming a set of products for the purposes of Chinese multiple design patent protection.
Being used at the same time means that the products are customarily used at the same time. This does not mean that the products are necessarily used at the exact same moment. It may be sufficient that use of one is associated with use of another of the set. For example, a coffee pot and sugar pot may not be used at the same moment, but use of one is often associated with use of the other.
One important restriction with designs of products in sets is that an application cannot contain more than one design for the same product. For example, a Chinese multiple design patent application for a dinner set cannot include two similar designs for a saucer.
Double patenting trap
When devising a Chinese multiple design patent filing strategy, particular care is required to avoid potential double patenting objections.
Article 9(1) of the Patent Law of the People’s Republic of China states that only one patent may be granted for an identical invention-creation. In this context, “identical” means identical or substantially identical. This can cause potential problems for an applicant with several similar designs.
Consider the following (extremely) simple example comprising 3 sets of 3 products (depicted by squares, circles and triangles):
In this example, we have two multiple filing options:
- File three sets of products; or
- File three applications for similar designs of the same product.
Since both strategies involve the same number of applications, you might think the applicant could choose either one without any adverse consequences. However, you’d be wrong… Opting for the three sets of products approach could result in a double patenting objection and the subsequent loss of two of the three applications!
In this case, the examiner could take the view the squares in each set are for substantially identical invention-creations and raise an objection under Article 9. Likewise, the examiner might raise the same objection against the circles and the triangles. Overcoming such an objection could be tricky, time consuming and far from guaranteed. For this reason, keeping similar designs of the same product in a multiple design application is a safer strategy because the examiner cannot cite one design within the same application against another on double patenting grounds.
To emphasise this point, let’s add a further diamond product into each set:
In this example, the applicant has the choice of filing 3 applications for 3 sets of products or 4 applications each for 3 similar designs of the same product. Here, there is a filing cost difference between the two strategies so careful consideration is required.
In this scenario, we would again opt for the second strategy and file 4 applications for similar designs of the same product, notwithstanding the higher cost. Whilst it’s possible the examiner might not consider the designs of the same product within each set to be substantially identical, it’s generally not worth the risk unless the cost difference is so great, the applicant is prepared to take the risk.
As many of you will appreciate, though, the real dilemma is when the applicant has more than the maximum 10 similar designs of the same product for a single application. In this case, the applicant has no choice but to split the designs up for separate filings. Your agent must then use very careful and delicate judgement to group the designs so as to try and minimise the chances of a double patenting objection.
Multiple Chinese design patents are possible but they require more careful consideration than in other major jurisdictions that have simpler systems. Depending on the products in question, multiple designs may be included in a single application as a set of products or a group of similar designs of the same product. However, for the reasons given above, particular care is required when attempting to avoid or at least minimise the potential for double patenting objections.
If you have any questions relating to Chinese design filings or require some input on filing strategy, please do not hesitate to contact us.