The Hague Agreement Concerning the International Registration of Industrial Designs (hereinafter referred to as the 'Hague Agreement') officially entered into force in China on May 5, 2022. Since then, in addition to filing design patent applications through the Paris Convention route, applicants may obtain design patent protection in China by filing an international design application through the Hague system and designating China.
Although China's Patent Law amended in 2021 has become more aligned with the Hague Agreement, certain issues may still arise during the CNIPA's examination of Hague design applications. This article aims to address these issues and potential solutions, with the goal of expediting the grant process.
1. Multiple Design Application
a. Number of Designs
- Under the Hague Agreement: up to 100 designs may be included in a single international application.
- During CNIPA’s Examination: pursuant to Article 13(1) of the 1999 Act of the Hague Agreement, China has declared that 'similar designs' may be included in a single application, but the number of design is limited to a maximum of 10.
b. Product Consistency
- Under the Hague Agreement: all designs included in a single application must belong to the same class under the Locarno International Classification.
- During CNIPA’s Examination: determination of 'similar designs' is relatively strict and requires that:
▫ the designs are related to the same product.
▫ the design features must be identical or similar, and the overall visual effect must be highly consistent, with only minor differences in detail.
Recommendation:
When filing a Hague design application designating China, applicants are advised not only to follow the Hague Agreement requirements for multiple design applications, but also to assess whether all designs comply with China's criteria for 'similar designs'. If CNIPA issues a notification of refusal, applicants may retain only those designs that meet China's requirements for similar designs. For the remaining designs, a divisional application may be filed before CNIPA no later than two months from the date of publication in China. Alternatively, a divisional application may be filed before CNIPA within two months from the date of international publication.
2. Number of Views
- Under the Hague Agreement: each design may be submitted with only partial views (e.g., only the front view and perspective view).
- During CNIPA’s Examination: for each design, an orthographic projection view of a side showing the essential design feature is required, while other sides may be submitted as either perspective or orthographic projection views.
Recommendation:
When filing a Hague design application designating China for a three-dimensional product, it is recommended to prepare at least six orthographic projection views (front, back, left, right, top, and bottom) along with a perspective view.
3. Description of Design
- Under the Hague Agreement: description of design is optional.
- During CNIPA’s Examination: description of design is required and shall include the characteristic features of the design to be protected (i.e., the product’s shape and/or pattern, as well as its color in combination with shape and/or pattern).
Recommendation:
When filing a Hague design application designating China, it is advisable to include the characteristic features of the design in the description of design at filing. Alternatively, the applicant may supplement the characteristic features after receiving a notification of refusal from CNIPA.
The Hague design system provides considerable flexibility. Following the above recommendations can help avoid unnecessary amendments and speed up the granting process.