The discrepancies of the design patents in Great China Region

by Chris Huang/Senior Engineer

Although Hong Kong and Macau have been reunited with China, their intellectual property system and operation are still running independently from China. Also, Taiwan’s IP system is different from China, Hong Kong, and Macau in various ways. Here, the basic discrepancies of design patents in Taiwan, China, Hong Kong, and Macau are expounded below:

1. Patent Term

(1) Taiwan: The patent term of Taiwanese design patent is 12 years from the filing date of the Taiwanese design patent application.

(2) China: The patent term of Chinese design patent is 10 years from the filing date of the Chinese design patent application. Nonetheless, the 4th Amendment of the Chinese Patent Act is proposed to extend the patent term of Chinese design patent to 15 years from the filing date of the Chinese design patent application.

(3) Hong Kong and Macau: The patent term of Hong Kong and Macau design patent is 25 years from the filing date of the Hong Kong and Macau design patent application.

2. Examination System

(1) Taiwan: The Patent Examination system of Taiwan adopts the automatic substantive examination for design patent applications.

(2) China, Hong Kong and Macau: The Patent Examination system of China, Hong Kong and Macau adopts the formality examination for design patent applications.

3. Design Application Claiming Similar Designs of Product

3-1 Comparison Table

3-2 Timetable

3-3 Scope of Patent Rights

 (1) China, Hong Kong and Macau: As per Clause 2, Article 31 of the Chinese Patent Act, “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.” In other words, the applicant may claim similar designs of the same product in a single design application with multiple embodiments. In addition, it is to be noted that as per Article 35 of the Regulation of Chinese Patent Act, “The number of similar designs in an application for design patent shall not exceed 10.” It is to be noted that Hong Kong also allows the application for design patent to claim similar designs of the same product, with the number of similar designs being unlimited. However, Macau does not allow the application for design patent to claim similar designs of the same product.

(2) Taiwan: As per Clause 1, Article 129 of the Taiwanese Patent Act, “An application for a design patent shall relate to one design.” In other words, similar designs of one or more products must be filed individually as independent design patent applications or filed as a design patent application and a derivative design patent application (s). It is to be noted that the derivative design patent application must be filed before the parent design patent application is issued.

3-4 Design Application Claiming A Set of Products

        (1) China, Hong Kong and Macau: As per Clause 2, Article 31 of Chinese Patent Act, “An application for a design patent shall be limited to one design. As to two or more similar designs for the same product or for products which fall into the same class and are sold or used in sets, an application for one design may be filed.” Also, as per Clause 2, Article 35 of The Implementing Regulation of Chinese Patent Act, “The two or more designs belonging to the same class and sold or used in sets as referred to in Article 31, paragraph two of the Patent Law mean that, each product incorporating the design belongs to the same class in the classification of products and is customarily sold or used at the same time, and the designs incorporated in each product have the same concept of design.” In other words, the applicant may claim a set of products in a single Chinese design application, in which the set of products indicates two or more independent products of the same class and having the same concept of design, and each product has its own use value and rights and the combination of the products has a combinative use value and rights. Besides, as per Cap. 522 of Registered Designs Ordinance of Hong Kong, “"set of articles" means 2 or more articles of the same general character that are ordinarily on sale together or intended to be used together, to each of which the same design, or the same design with modifications or variations not sufficient to alter the character or substantially to affect the identity thereof, is applied.” In other words, Hong Kong also allows a single design application to claim a set of products of the same general character that are ordinarily on sale together or intended to be used together. As to Macau, Macau does not allow a single design application to claim a set of products of the same general character.

(2) Taiwan: As per Clause 2, Article 129 of Taiwanese Patent Act, “Two or more articles belonging to the same class and are customarily sold or used together may be filed as one design.” In other words, the applicant may claim a set of products in a single Taiwanese design application. However, as per Chapter 10 of Taiwanese Patent Examination Guideline, “The design patent claiming a set of products must take the set of products as a whole to enforce the rights, it is not allowed to enforce the design patent rights for an individual product.” This is contrary to the Chinese design patent system, in which the individual product of a Chinese design patent claiming a set of products has an independent use value and rights.

3-5 Design Application Claiming Combination Product

(1) China, Hong Kong and Macau: As perSection 4.2.1, Chapter 3, Part 1 of Guideline For Patent Examination of China, “Combination product refers to a single product consisting of a number of components. It could be divided into assembled product with only one option of assembly, combination product needless of assembly or assembled product with more than one option of assembly.” In other words, China allows a combination product that is assembled by components to be claimed in a design application. In addition, Macau also allows a combination product that is assembled by components to be claimed in a design application. However, Hong Kong does not allow a combination product that is assembled by components to be claimed in a design application.

(2) Taiwan: Currently, Taiwan does not allow the application for design patents to claim a combination product that is assembled by components.

4. Domestic Priority

(1) China, Hong Kong, and Macau: Currently, China, Hong Kong, and Macau do not statutorily allow the design patent applications to claim domestic priority based upon a prior filed domestic design patent application. Nonetheless, the 4th Amendment of the Chinese Patent Act is proposed to introduce the domestic priority system to statutorily allow the design patent applications to claim domestic priority based upon a prior filed domestic design patent application.

 (2) Taiwan: Currently, Taiwan does not statutorily allow the design patent applications to claim domestic priority based upon a prior filed domestic design patent application.

5. Partial Design Patent Application

(1) China, Hong Kong, and Macau: Currently, Hong Kong and Macau allow the partial design of a product to be claimed in a design patent application. However, China does not statutorily allow the partial design of a product to be claimed as design patent application. Nonetheless, the 4th Amendment of the Chinese Patent Act is proposing to allow the applicant to claim partial design of a product in a design patent application in China.

(2) Taiwan: As per Clause 1, Article 121 of Taiwanese Patent Act, "Design" means the creation made in respect of the shape, pattern, color, or any combination thereof, of an article as a whole or in partby visual appeal.” In other words, the applicant may claim a portion of the ornamental design of a product in a design patent application.

6. Computer-generated icon design

computer icon design applications

 in Taiwan and China is increasing every year

The emphasis on computer icon design application by international companies

(1) China, Hong Kong, and Macau: As per Cause 7, Section 4.3, Chapter 3, Part 1 of China Guidelines For Patent Examination (2014), “For the patent application for the product appearance design including graphical user interface, if necessary, the use of the graphical user interface, the area of the graphical user interface in the product, the human-machine interaction way and states of change and so on should be stated." In other words, the applicant can not file a design patent application solely claiming a computer-generated icon in China. To file a computer-generated icon design application in China, Hong Kong, and Macau, the computer-generated icon design must be “attached” to one product and the applicant must submit the views of the whole ornamental design of the product with at least one view showing the tendency of the change of the state of the icon.

(2) Taiwan: As per Clause 2, Article 121 of Taiwanese Patent Act, “For computer generated icons (Icons) and graphic user interface (GUI) applied to an article, an application may also be filed pursuant to this Act for obtaining a design patent.” In other words, the applicant can file a design patent application solely claiming a computer-generated icon in Taiwan.