IP Guide DESIGN PATENT APPLICATIONS. Protecting Your Industrial Designs under Chinese Patent Law. Trademark registration

Transcription

1 Trademark registration IP Guide DESIGN PATENT APPLICATIONS Protecting Your Industrial Designs under Chinese Patent Law 2007 WANG JING & CO. All rights reserved

2 This publication has been prepared for clients and professional associates of Wang Jing & Co. and Wang Jing & Co. IP Group. Please note that this Guide is written in general terms and is intended for informative purposes only. Hence, the information provided should not be relied upon as legal advice, and should not be acted upon without seeking professional counsel. This publication is protected by copyright. No part may be produced or transmitted by any process or means without prior transmission of Wang Jing & Co.

3 1. THE NEED TO REGISTER U nder the Chinese legal system, novel industrial designs may be protected by copyright or design patent. Ownership of copyright is created when the design is completed and need not to be registered with any administrative authority, but the scope of protection is limited. On the other hand, registering the design patent in China to protect your industrial designs provides much strong protection of your exclusive rights against third parties. Conditional upon the payment of annuities, a design patent is granted for ten years from the filling date. Upon being granted the design patent right, the patentee will have the negative right to exclude others from making, selling, or importing patented products in China during the term of the patent. China applies the first-to-file rule, meaning that whichever party successfully applies first has the exclusive right that the patent represents. You can apply for priority rights if the Chinese design patent application is filed within six months from the filing of the same design application in another jurisdiction. 2. APPLICATION PROCEDURES hen preparing the filing of a patent application, the following Wshould be considered: (A) Preparing of documents Design Patent Applications The following materials are needed to file an application for design patent: (i) (ii) The application form with information on the applicant; The Power of Attorney (PoA) from the applicant authorizing the agent to handle the application; The application form and PoA will usually be prepared by the agent. Details such as the applicant name and address should be provided in Chinese. (iii) The patent application file, consisting of the product s pictures and a brief statement. An application needs six pictures from six-sides (top, bottom, front, back, left, right) of the product all on the same scale. If two sides are identical or symmetrical, one can be omitted as long as such omission is explained. If the product is three-dimensional, one or more using picture will be needed. If the design of the product is flexible (think of a folding chair for example), - 1 -

4 more pictures are needed to show the design under different conditions, with an explanation in the brief statement. An application should always be reviewed by your patent agent to ensure that rejection or unnecessary delays are avoided. (iv) (B) The document of priority right (if the priority right is required). Examination The State Intellectual Property Office (SIPO) as the competent administration will subject the design patent to a preliminary examination only, meaning that it will forego a substantive examination for novelty. Design Patent Applications After the SIPO has completed its preliminary examination of a design application, it will either reject or approve the application. The applicant can appeal a rejection with the Patent Reexamination Board (PRB); the PRB s re-examination decision can be appealed in court. If the SIPO approves the design application, the patent will be published and the applicant will be granted the Design Patent Certificate. A design patent application will normally be approved or rejected within one year. 3. POST-GRANTING ISSUES (1): PATENT INVALIDATION A fter a design patent right has been granted, third parties can dispute such a right on the basis that its granting was not in compliance with Chinese patent law. In practice, an application for invalidation is often made after a dispute has arisen. This is a popular and effective means to defend against a patent infringement lawsuit, as the lawsuit will often be postponed until a decision on invalidation has been made. There are two main grounds for invalidation of a design patent. One is that the design patent is found to be identical or similar to other designs that were published before the patent filling date (or priority right, if any), including by the patent holder himself! The other is that the design patent right conflicts with the previous rights of third parties, such as copyrights. During the invalidation procedure, PRB officials will exam the reasons and relevant evidences submitted in the invalidation application, and consider the patent holder s arguments. The invalidation process takes approximately 1 year. Parties have the right to appeal the PRB s invalidation decision in court

5 4. POST-GRANTING ISSUES (2): SCOPE OF RIGHTS A fter the design patent has been granted by the SIPO, the patent holder will have the exclusive rights to the patent in C hina for the product as showed in the pictures. Under the Patent Law of the People s Republic of China, such exclusive rights prohibits third parties in China from making, selling or importing identical or similar products. In case of infringement, the patent holder may bring an administrative action through a complaint with the SIPO, or file a civil lawsuit with the court. In the former case the infringer may be ordered to cease infringement and pay a fine, while in the latter the patent holder may claim for compensation as well. Design Patent Applications - 3 -

6 T WANG J JING & CO. S S SCOPE OF SERVICES his IP Guide: Design Patents is designed to help you decide whether or not, and how to apply for your design patent rights in China. In order to further enhance the effectiveness of a design patent application, Wang Jing & Co., IP Group offers Clients the following legal services relating to advisory and enforcement. GRANTING OF PATENT RIGHTS For those companies and individuals interested in protecting their industrial designs in China, the Group offers the following services: Design Patent applications Patentability Application Advice on patentability of a design under Chinese Law; Advice on the chances for successful application. Preparation filing documents and submission of application materials; Liaison with authorities up to rejection or final approval. Re-examination and Appeal Apply for re-examination with the PRB against the SIPO s decision to reject an application; Appeal in court against the PRB s decision to reject the application

7 PROTECTION AND ENFORCEMENT For those individuals and companies which have been granted design patent rights under Chinese law, the Group offers the following services: After understanding your company, products, market and objectives, the Group may formulate a comprehensive advice on measures that can be initiated to ensure maximum protection and enforcement of your design patent rights. Strategic Advice If another party has been unjustly granted a design patent that conflicts with your interests, the Group may insist in instigating an action for invalidation of the patent. Invalidation If another party applies for invalidation of your design patent, the Group may assist you to defend such an application. To ensure that any enforcement actions can be taken quickly and effectively, information on and evidence of design patent rights should be readily available. The Group can keep a file with all relevant information, so that both you and relevant authorities can be provided with the most updated information immediately on request. Also, the Group will notify you of due annual payments, and can arrange for such payments on your behalf. Invalidation Defence Administration and Annuities Design Patent applications Recording design patent rights with the General Administration of Customs (GAC) will sometimes allow for more efficient protection in case infringing goods are discovered in import to or export from China. We may assist you with customs recording to ensure maximum readiness in case infringements in import or export are found. Customs Recording Under Chinese law, it is possible to transfer or license the rights to a design patent to a third party. You can choose to sell or get royalty fee from your own patent when the time is right. The Group will assist you to complete the negotiation and agreement. Assignment and Licensing If a third party infringes on your design patent right, you may pursue an administrative action, or civil lawsuit. Depending on the actual circumstances as well as your objectives, one or a combination of such enforcement actions may provide effective means to tackle infringements. Enforcement - 5 -

8 Contact Details If you wish to receive more information on intellectual property issues, please contact the following persons of Wang Jing & Co. IP Group or your usual contact at Wang Jing & Co. Mr. Peng Kai Patent / Trademark Attorney pengkai@wjnco.com Mr. Maarten Roos Senior Consultant mjroos@wjnco.com 14/F, South Tower, World Trade Centre Huanshi East Road Guangzhou People s Republic of China Tel Fax Rm , 28/F., Bank of China Tower, 200 Yincheng Road Central, Pudong Shanghai People s Republic of China Tel : Fax: For more information and a full list of Wang Jing & Co. offices, please visit WANG JING & CO. All rights reserved 广州 上海 天津 青岛 厦门 海口 深圳 Guangzhou Shanghai Tianjin Qingdao Xiamen Haikou Shenzhen