How to claim a priority for design patent application in China
date: 2019-04-01Chris ShiRead by:
With the end of Samsung vs Apple -- the litigation of the century, and the appearance of China's first GUI invalidation decision, design patents have been become more and more interested by domestic and foreign companies. Nowadays, foreign applicants often apply for prior design applications in China via Paris Convention. However, because different parties/organizations have different requirements for the submitted views, it is often necessary to modify the views in the priority documents. Therefore, whether it is possible to request foreign priority has become a major confusion for foreign applicants. Here, this subjected is discussed about China's requirements for foreign design applications during the examination.
Article 29 states:
Where, within twelve months from the date on which any applicant first filed in China an application for a patent for invention or utility model, he or it files with the patent administration department under the State Council an application for a patent for the same subject matter, he or it may enjoy a right of priority.
Therefore, for the same subject matter, two requirements should be satisfied:
(1) The application is a patent for design;
(2) The subsequent design patent application in China should be clearly expressed in its prior application in a foreign country.
At the examination stage, the substance of the subject matter is generally not examined and only if the subject matter of the prior application and the subsequent application is clearly unrelated, a Notification for deeming not request a priority is issued. In general, when submitting a Chinese design application, the lines that do not conform to the regulations (dashed lines, hatched lines, discontinuous lines, etc.), the defects caused by the reflection in shooting photos, the non-corresponding projection relationship, and the local subtleties, different view types do not adversely affect claiming a priority. However, if there are a large number of dashed lines in a view, and deleting the dashed lines causes the design of the subsequent application to not be clearly indicated in the foreign prior application, that may result in being unable to enjoy the priority. In order to avoid the above situation, the applicant may consider understanding the relevant laws and regulations of China at the beginning of the application.
Tips: When submitting the design application for the first time in a foreign country, supplement the priority application with views conforming to the Chinese patent practice, or consider filing the application in the same day in multiple countries, including submit an application in China with views conforming to the Chinese patent practice. The above mentioned solution will avoid situations where foreign priorities could not be claimed.