Analysis of Key Revisions of New Guidelines for Patent Examination: Examination for Partial Design

View: 175     Date: 2024-01-08 11:45

Author: Shuang MA

The new Patent Law, which came into effect on June 1, 2021, has included partial design in the scope of protection under the patent law to meet the objective needs of industrial design innovation and development. However, regarding the standards and requirements of partial design application and how to examine them, it is necessary to rely on the further revisions of the Guidelines for Patent Examination (hereinafter referred to as the "original Guidelines") implemented on January 15, 2021. On December 21, 2023, China National Intellectual Property Administration published the latest "the Guidelines for Patent Examination" (hereinafter referred to as the "New Guidelines"), which clarified a number of specific examination provisions for partial design. Compared with the Revised Draft Guidelines for Patent Examination issued on August 3, 2021 (hereinafter referred to as the "First Draft") and October 31, 2022 (hereinafter referred to as the "Second Draft"), there are more adjustments and extended contents.

This article summarized the special requirements for partial design in the patent grant procedure, which mainly involving five aspects: the content of protection, the requirements of application document, the special restrictions on amendment, the restrictions on combination application and the restrictions on divisional application.

1. The content of protection

Section 4.4, Chapter 3 of Part I of the new Guidelines gives a clear explanation of the meaning of partial design: “partial design refers to the new design of the product's partial shape, pattern or its combination, as well as the combination of color, shape and pattern, which is aesthetic and suitable for industrial application”. To protect the "indivisible part" of the product, the application should be filed in the form of partial design, for example "the carving of the seat back", etc., and for the product design involving the graphical user interface, if the design point is only in the graphical user interface or the part of the graphical user interface, it can also be filed as partial design.

"Whether it can be divided" is the condition that defines overall design and partial design, but not all the design of the indivisible parts are included in the protection. In Section 7.4, Chapter 3 of Part I of the new Guidelines, two specific types of partial design situations are clearly stipulated in the cases of not granting patent rights for designs. One situation is: the partial design that cannot form a relatively independent area or constitute a relatively complete design unit on the product. For example, a turning line in a water cup, an arbitrary cut of an irregular part of eyeglass lens. Another situation is: the partial design that requested patent protection is only a pattern on the surface of the product or a design that combines pattern and color. For example, a pattern on the surface of a motorcycle.

2. Special requirements for application document

2.1 Product name of partial design

It should include not only the name of the partial design for which protection is requested, but also the name of the overall product on which the partial design is located, such as "door of a car", "camera of a mobile phone", and "search bar of mobile payment graphical user interface of electronic device", etc. If an application contains multiple designs, the name of each design should meet the above requirements, the parts of each design should be connected with "and", for example, "search bar of mobile payment graphical user interface of electronic device and search option bar of mobile payment graphical user interface of electronic device".

2.2 Pictures or photographs of partial design

When filing a partial design application, a view of the overall product shall be submitted, not only of the view of partial design requested for protection. However, it must be able to clearly distinguish the part requested for protection from other parts, and clearly show the partial design of the product requested for protection and its position and proportion in the overall product.

Rule 30 of the revised Implementing Regulations of the Patent Law stipulates that a partial design patent shall use a combination of dotted and solid lines or other means to indicate the content of the part that needs protection. The new Guidelines specify that the solid line indicates the part that needs to be protected, and the dotted line indicates the other parts. The use of a combination of dotted and solid lines is the only method explicitly recognized in the Regulations and is widely accepted by a large number of countries that have protection for partial design.

However, in practice, this method is not applicable in all cases. For example, when the submitted product view is a photograph, it is often difficult to use the combination of dotted lines and solid lines to determine the protection part of partial design. In view of this, the new Guidelines also provide another recommended method, which is mainly used for rendering pictures or photographs views: cover the parts that do not need protection with a single color translucent layer.

In addition, if there is no clear dividing line between the part to be protected and the rest, the dividing line should be indicated by dash-dotted line.

2.3 Brief description of partial design

Compared with overall product design, the brief description of partial design includes the following four special provisions:

(1) Where partial design requested to be protected is expressed by means of the combination of dotted lines and solid lines, the part requested to be protected shall be indicated in the brief description. That is, for the two expressions method recommended in the new Guidelines, only when the combination of dotted and solid lines is used, it is no need to indicate the part of the requested protection in the brief description, but when the recommended method of covering the parts that do not need protection with a single color translucent layer or any other method, it is necessary to indicate the part of the requested protection in the brief description.

(2) Where dash-dotted line is used to indicate the dividing line between the part requested to be protected and other parts, it should be indicated in the brief description when necessary.

(3) When necessary, the purpose of the part requested to be protected shall be clearly stated, and correspond to the purpose reflected in the product name. It should be noted that this particular requirement is not a substitute for the general requirement in the brief description of the design to include the "name of the design product". That is, the brief description not only needs to specify the purpose of the partial design to be protected, but also needs to specify the purpose of the overall product, which can be written in the way of the overall product use + partial design use.

(4) The picture or photograph that can best indicate the key points of the design should contain the partial design that is requested to be protected.

3. Special restrictions on amendment

Section 10, Chapter 3 of Part I of the new Guidelines on the amendment restrictions of partial design, in addition to the general principle that amendment shall not exceed the scope shown in the original picture or photograph, it further strictly restricts the timing for the following three amendment methods:

(1) Amend overall design into partial design;

(2) Amend partial design into overall design;

(3) Amend partial design of an overall product into another partial design of the same product.

For the above three kinds of amendments, they may only be made in voluntary amendment submitted within two months of the filing date. Beyond that, regardless of whether the amendment is submitted in the form of voluntary amendment more than two months after the filing date, or the amendment text submitted by the applicant in response to the notice of office action, even if the amendment does not exceed the scope of the original picture or photograph, it will not be accepted. If any of the above three amendments are submitted in the form of voluntary amendment more than two months after the filing date, the examiner shall issue a notice deemed not to have been submitted such amendment. If the above amendment appears in the applicant's response to the examination stage, the examiner shall issue a notice of office action, notifying the applicant that the amendment does not comply with the provisions of Rule 57, paragraph 3 of the Implementing Regulations of the Patent Law, and requiring the applicant to resubmit within the specified time limit. If by the expiration date of the specified time limit, the amended text submitted by the applicant still does not comply with the provisions, the examiner will continue to examine the text before the amendment and make decision for grant or rejection.

4. Special restrictions on combination application

According to the unity provisions of the Patent Law, two or more similar designs of the same product may be filed as one application. Under the general principle, the special requirements for the combination application of partial design in the First Draft, the Second Draft and the new Guidelines finally published, have undergone several adjustments, mainly involving two aspects: the design of multiple parts of the same product, the overall design and partial design of a same product.

Regarding the design of multiple parts of the same product, the First Draft puts forward the following provisions: "Two or more unrelated partial designs of the same product can be regarded as a design if they have a functional or design connection and form a specific visual effect. For example, the design of two eyeglass temples in eyeglasses and the design of four corners on a mobile phone "and this provision was deleted in the Second Draft, but it was clearly reflected in the final publication of the new Guidelines.

The First Draft does not explicitly involve the restrictions on the application for the overall design of the same product and its partial design. In Section 9.1, Chapter 3 of Part I of the Draft, "more than two similar designs of the same product", added that "the overall design of the same product and any partial design cannot be filed as one application". This content has been deleted in the corresponding part of the new Guidelines.

5. Special restrictions on divisional application

Following the principle that the design requested for protection in divisional application must be a design clearly recorded in the parent application, the new Guidelines specify that the divisional application must be consistent with the original application with respect to the protection of the overall design or the protection of partial design. If the original application is for the overall design of the product, part of it is not allowed to be filed as a divisional application. For example, a design application requested protection for a motorcycle, and the partial design of the motorcycle cannot be filed as a divisional application. Where the original application is for a partial design of the product, the overall or any other partial design shall not be allowed to be filed as a divisional application.

To sum up, the summary and brief analysis of the key points of special provisions on partial design in the new Guidelines will gradually present more detailed interpretations with the examination practice after the new Guidelines come into effect on January 20, 2024.