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Registration of International Industrial Designs under the Hague Agreement Concerning Will Enter into Force in China
Registration of International Industrial Designs under the Hague Agreement
Concerning Will Enter into Force in China
The 4th amendment of the PRC (China) Patent Law came into effect on 1 June 2021, which includes, among others, an amendment to cope with China's accession to the Hague Agreement Concerning the International Registration of Industrial Designs, namely, extension of the patent term for a design patent from the original 10 years to 15 years. On 5 February 2022, China deposited with the World Intellectual Property Rights Organization (WIPO) its Instrument of Accession to the Hague Agreement Concerning the International Registration of Industrial Designs ("1999 Act") ("Hague Agreement"), which will enter into force in China as of 5 May 2022.
China government is now in the process of amending the Implementing Regulations of the PRC Patent Law as well as the Patent Examination Guidelines in line with the amended Patent Law taking effect on 1 June 2021. To facilitate the upcoming implementation of the Hague Agreement as of 5 May 2022, on 25 April 2022, the China National Intellectual Property Administration ("CNIPA") announced the "Interim Measures for Handling Related Examination Matters as to the Implementation of the Hague Agreement" via the Announcement No. 481 ("Interim Measures"). The said Interim Measures will also take effect as of 5 May 2022. Applicants who will file an international application for industrial design(s) ("international application for design(s)") under the Hague Agreement should follow the relevant procedures stipulated in the Interim Measures.
The Interim Measures consist of 9 articles and the main points thereof as follows:
1. Article 1 sets out the manners in which an international application for design(s) should be filed. Paragraph 1 of Article 1 states that a qualified applicant may file an international application for design(s) as of 5 May 2022. Paragraph 2 sets forth the following methods for filing an international applications for design(s):
1) The applicant may file an international application for design(s) directly with the International Bureau ("IB") based on application documents prepared in English language, French language or Spanish language; or
2) The applicant may file an international application for design(s) indirectly with the CNIPA based on application documents prepared only in English language and request the CNIPA to transmit the said application documents to the IB.
Pursuant to Paragraph 3 of Article 1, an indirectly-filed international application (i.e., the above approach 2)) shall be filed on paper (in person or by mail) or electronically in accordance with the relevant regulations stipulated in the Hague Agreement as well as the requirements upheld by the CNIPA. According to Paragraph 4 of the same article, during the period of implementation of the Interim Measures, an applicant shall pay the relevant fees directly to the IB.
2. As stated above, China's amendment of the Implementing Regulations of PRC Patent Law and the Patent Examination Guidelines are still ongoing. Article 2 of the Interim Measures clearly states that the CNIPA will not initiate any examination on an international application for design(s) designating China until the amendments of the Implementing Rules of the PRC Patent Law and the Patent Examination Guidelines are concluded and take effect. Till then, the CNIPA will proceed with the examination according to Paragraph 3 of Article 19 of the PRC Patent Law as well as the newly amended Implementing Rules of the PRC Patent Law and the Patent Examination Guidelines.
3. Article 3 sets forth the requirements for claiming priority for an international application for design(s). An applicant claimed priority right and designating China as designated state, shall, within three months from the date of publication of the international application, comply with the following requirements before the CNIPA:
1) To submit the certified priority document(s) if the said document(s) is (are) not submitted at the time of filing the international application;
2) To submit an Assignment for Right to Claim Priority if the applicant listed on the priority document(s) is inconsistent with the applicant who files the international application; and
3) To pay the relevant fee for claiming priority.
If the applicant fails to comply with any of the above-mentioned requirements within the prescribed time period, the priority claim shall be deemed as not having been made.
4. Article 4 sets forth the guidelines for handling divisional applications. According to Article 4, an applicant may file divisional application(s) within two months from the date of publication of an international application for design(s). The divisional application will be deemed as a normal Chinese national design patent application instead of an international application for design(s), which shall be governed by the same Patent Law provisions, rules and patent examination guidelines applicable to divisional applications originated from non-international application for designs.
5. Article 5 states that when an international application for design(s) is subject to any of the exceptions for not losing novelty as stipulated in Article 24 of the PRC Patent Law, the applicant shall act as follows:
1) To declare the exception for not losing novelty at the time of filing the international application for design(s) by checking the corresponding box on the application form, and
2) To submit relevant supporting documents to the CNIPA within two months from the date of publication of the international application.
Where no declaration is made or no supporting document(s) is (are) submitted on time, the provisions of Article 24 of the Patent Law shall not apply to the concerned design application.
6. According to Article 6, an applicant for an international application for design(s) shall pay the required fees in the full amount in accordance with the fee regulations implemented by the IB and the CNIPA. Also, according to Article 6, the CNIPA will further announce the regulations for paying the individual designation fee and the available fee reduction policy. For an international application for design(s) filed after the said CNIPA fee regulations and fee reduction policy, the applicant may file a request for fee reduction of the individual designation fee in accordance with the said CNIPA regulations.
7. According to Article 7, where there is a change of the applicant(s) or the patentee(s) of an international application for design(s), in addition to going through the relevant procedures before the IB, the applicant or patentee shall also submit relevant supporting documents to the CNIPA to support the patent owner's change. If such supporting document(s) (is) are in a foreign language, the applicant shall submit to the CNIPA the Chinese translation(s) of such document(s). If no supporting document(s) is (are) duly submitted or if the submitted supporting document(s) is (are) considered unacceptable, the CNIPA will notify the IB that the patent ownership change has not taken effect in China.
8. Article 8 stipulates that, for other legal formalities and matters that are not governed in the aforementioned Interim Measures, an applicant of an international application for design(s) shall submit a request in accordance with the provisions of the Hague Agreement as well as PRC Patent Law and its Implementing Regulations as well as the PRC Patent Examination Guidelines
9. Article 9 specifies that the Interim Measures will take effect as of 5 May 2022.
The Interim Measures provide a tentative guideline for handling international applications for designs to be filed as of 5 May 2022. Details as to how to handle an international application for design(s) shall depend on the contents of the to-be-amended Implementation Regulations of the PRC Patent Law and the Patent Examination Guidelines thereof. We will continue following up the progress and keep readers of our newsletters updated in due course.
If you have any questions, please feel free to contact us with your questions.