Written by Elliot Zhou

Partner, Patent and Design Attorney, Attorney at Law

 

China become a member of the Hague Industrial Design System since May 5^th, 2022. The main goal of the Hague System is to create a simple and economic mechanism for the international registration of industrial designs, which are currently acceptable to 91 countries/regions. This potentially addresses the difficulties of having to file the same industrial designs concurrently in many countries.

 

In the past two years, we have handled hundreds of Hague International Registration designating China. Our general feeling is that although international design applications are simple and cost-effective at the beginning, however, due to the difficulty of taking into account of all the formality requirements in various countries at the beginning (especially the U.S and China), some international applications designating China may receive Notifications of Refusal that are hard to overcome before the CNIPA. Let me elaborate on a few rejections typically raised by CNIPA/WIPO.

 

Firstly, according to the Chinese Patent Examination Guideline (2023), if an international design application claims a priority, the applicant must submit a certified copy of the priority documents to the CNIPA within three months from the international publication date, given that such have not been submitted to WIPO before. Failing to do so will result in loss of priority claim.

 

Quite a few applicants, especially non-Chinese applicants, would have easily missed the above-mentioned deadlines because the applicant probably has not entrusted a Chinese agent during the short three-month period and the WIPO/CNIPA probably has not issued any Notification of Refusal yet. As a result, no one is in a right position to remind the applicant to submit the priority documents to the CNIPA. The only remedy to this type of rejection is to beg Chinese examiners in a call or in a formal response and see if she or he is willing to accept the post-filed priority documents. But, such will be totally at the examiner’s discretion.

 

Second, “lack of six views” is another reason of rejection sometimes raised by the CNIPA against international design applications designating China. From time to time, we have seen international applications as filed do not include six views in the drawings (for example, a missing bottom view of a cup), which may not comply with the CNIPA standard. “Lack of six views”, if raised, is sometimes difficult to overcome because adding views after initial filing may be deemed as a “new matter”. Typically, the common strategy to overcome such an issue is to argue that such a view is omissible because it is not seeable during the use or it contains no characteristic features. But, this argumentation may not always work, especially if the product is a small gadget.

 

Third, the CNIPA always wants to see a “brief description” of the industrial design, including a description on where the characteristic features of the design are. But, most of the international design application does not include such a statement and may receive a rejection. Typically, if we receive such a rejection, we could respond by adding that “The characteristic features of the design lie in the shape (or structure) of the product”, and this kind of general statement is acceptable to the CNIPA in most of the cases.

 

If you have any questions on this topic, or need assistance for prosecution and enforcement of patent, design or trademark applications in China, please feel free to contact us at patent@foundin.cn and trademark@foundin.cn.