Written by Elliot Zhou

Partner, Patent and Design Attorney, Attorney at Law

 

China has officially joined the Hague Industrial Design System since May 5, 2022. While the CNIPA’s standard of examining Hague design applications is similar to the standard of examining conventional Chinese design applications, however, we noticed some changes in practice recently, where the CNIPA seems to have relaxed the formal requirements against “surface shadings” in Hague applications. To put it simply, if the drawings of a Hague application contain surface shadings, the CNIPA examiner will not reject it anymore, while the same was frequently used as a ground of refusal previously in 2022-2024.

 

We called the CNIPA’s design examination department to figure out if there has been any changes in Laws or Regulations regarding surface shadings. The examiner explained that this is just an internal change in CNIPA’s design examination practice, and there is no explicit change in the Law and Regulation.

 

Interestingly, this change of practice seems to only apply to Hague international applications, but not apply to conventional Chinese design applications or divisional Chinese design applications. That is to say, if the CNIPA raises a unity rejection against the Hague international application and if the applicant files a divisional application to protect the rest of the designs, the CNIPA will probably ask the applicant to delete all the surface shadings in the divisional application, but could retain all the surface shadings in the parent “Hague application”.

 

To provide a clearer picture, we summarized the CNIPA’s new practices in the table below.

 

In addition to the surface shadings, we also noted that the CNIPA has relaxed the procedural requirement against “late filing of priority documents or priority information” in Hague applications.

 

Specifically, if you look into the Patent Examination Guideline of China (2024), it clearly sets forth that the deadline of submitting certified priority document or DAS code, for a Hague application, is latest by three months from its international publication date. However, the CNIPA’s actual practice is that if the applicant misses the three-month deadline of supplementing DAS code or the certified priority document, the CNIPA may likely issue a rejection in the Notification of Refusal and will give applicant an opportunity to supplement the priority information.

 

We have handled at least 5 Notification of Refusal containing this rejection since 2023, and all of them were eventually overcome after we submitted the DAS code with the CNIPA beyond the three-month deadlines. This indicates that the CNIPA takes a practice that is far more flexible than what the Patent Examination Guideline requires.

 

In our opinion, these changes of practice are probably because Hague applications are usually filed for not just China, but will designate many other countries/regions. The CNIPA probably has realized that a harsh procedure or formal requirements may potentially harm IP owners’ interest in obtaining a design right in China, and such would be against the CNIPA’s long-term goal of providing a strong protection for innovation within the country.

 

Anyway, we have handled hundreds of Hague international design applications so far, including those designating China and those designating other countries/regions. If you have any questions about this topic, or if you would like to hear other practices about patent, design or trademark, please feel free to contact me at patent@foundin.cn or trademark@foundin.cn.