Special Provisions on International Applications for Design in the Revisions of Implementing Regulations of Patent Law

View: 106     Date: 2024-01-05 09:24

Authors: Huaiyuan XU, Na ZHANG

The Hague Agreement on the International Registration of Industrial Designs (hereinafter referred to as the Hague Agreement) is an international treaty governed by the World Intellectual Property Organization, which, together with Madrid Agreement Concerning the International Registration of Marks and the Patent Cooperation Treaty, constitutes three major international cooperation systems in the field of industrial property. The international application for designs submitted through the Hague Agreement can be effective for all Contracting States in one language, by filing one application and paying fees for once, which greatly facilitates the applicants to obtain design protections in multiple countries and regions.

On May 5, 2022, the Hague Agreement on the International Registration of Industrial Designs (1999 text) come into force for China. Chinese applicants may submit their international applications for design directly to the International Bureau of the World Intellectual Property Organization (WIPO) or transmit them through China National Intellectual Property administration under the Hague Agreement. China's accession to the Hague Agreement has ensured the integration of Chinese design enterprises into the global design protection system and promoted the improvement of creative design industry in China. By November 2023, more than 2,400 designs under the Hague Agreement had been registered by Chinese applicants through CNIPA. According to China's legislative practice, after acceding to international treaties, China has transformed the relevant provisions of international treaties into domestic laws for easy implementation. The latest revisions of Implementing Regulations of Patent Law made special provisions on some parts of the Hague Agreement.

I.                   Special provisions on examination procedure

Rule 136 of Implementing Regulations of Patent Law stipulates that: The patent administration department under the State Council shall, in accordance with Article 19, paragraph two and paragraph three of the Patent Law, handle international registration application for industrial design submitted in accordance with the Hague Agreement on the International Registration of Industrial Designs (1999 text) (hereinafter referred to as the Hague Agreement). The conditions and procedures for the patent administration department under the State Council to handle international registration application for design filed and designated in China in accordance with the Hague Agreement (referred to as international design application) shall be subject to the provisions of this chapter; If there is no provision in this chapter, the relevant provisions of the Patent Law and other chapters of the Implementing Regulations shall apply.

Rule 137 of Implementing Regulations of Patent Law stipulates that: An international application for design, of which the international registration date has been determined according to the Hague Agreement, and which has been designated for China, shall be deemed as an application for a design patent submitted to the patent administration department under the State Council, and the international registration date shall be deemed as the application date referred to in Article 28 of the Patent Law.

Rule 138 of Implementing Regulations of Patent Law stipulates that: After the International Bureau publishes the international application for design, the patent administration department under the State Council shall examine the international application for design and notify the International Bureau of the examination results.

The above rules give authorization for CNIPA to examine international application for design, which has been designated for China according to the Hague Agreement. CNIPA shall conduct the examination in accordance with the domestic laws, namely the Patent Law and Implementing Regulations of Patent Law. The above rules also make special provisions on the inconsistencies between the relevant provisions in China's domestic laws and the Hague Agreement as well as its Common Implementing Regulations.

II.                Special provisions on the application system

Rule 139 of Implementing Regulations of Patent Law stipulates that: If an international application for design published by the International Bureau claims one or more priorities, it shall be deemed that a written declaration has been made in accordance with Article 30 of the Patent Law. If the applicant of an international application for design claims priority, they shall submit a copy of the prior application documents within 3 months from the date of publication of the international application for design.

Rule 140 of Implementing Regulations of Patent Law stipulates that: If the design involved in an international application for design falls under the circumstances listed in Article 24, subparagraph (2) or (3) of the Patent Law, a declaration shall be made at the time of filing the international application for design, and the relevant supporting documents specified in Rule 33, paragraph three of these Implementing Regulations shall be submitted within 2 months from the date of publication of the international application for design.

Rule 141 of Implementing Regulations of Patent Law stipulates that: If an international application for design includes two or more designs, the applicant may, within two months from the date of publication of the international application for design, submit a divisional application to the patent administration department under the State Council and pay the fees.

Rule 142 of Implementing Regulations of Patent Law stipulates that: If an international application for design published by the International Bureau includes a specification containing essential features of the design, it shall be deemed that a brief description has been submitted in accordance with Rule 31 of the Regulations.

The above rules involving the institutional arrangements such as priority, grace period of novelty, unity, key points of design and brief description, which are all special provisions for the transition of the Hague Agreement and its Common Implementing Regulations into domestic laws.

III.             Special provisions on protection of grant

Rule 143 of Implementing Regulations of Patent Law stipulates that: If an international application for design is examined by the patent administration department under the State Council and no reason for rejection is found, the patent administration department under the State Council shall make a decision to grant protection and notify the International Bureau. After the patent administrative department under the State Council makes a decision to grant protection, an announcement shall be made, and the design patent right shall take effect from the date of announcement.

Rule 144 of Implementing Regulations of Patent Law stipulates that: If the applicant has completed the procedures for the change of rights in the International Bureau, shall provide relevant supporting materials to the patent administration department under the State Council.

According to Article 19 of the Hague Agreement, the designated Office has the right to refuse the effect of the international application in the said Contracting Party in accordance with the provisions of domestic laws, and the notification of refusal shall be issued to the International Bureau within the prescribed period. The Patent Law further stipulates that the International Bureau shall also be notified of the decision for grant made by CNIPA. In respect of international application for design, after completing the procedures for the change in the International Bureau, the relevant supporting materials shall be provided to CNIPA to record and register the change.