Amendments to the China Patent Examination Guidelines in 2022 - Part 1: New rules for designs in view of China signing onto the Hague Agreement

This year, China stepped further onto the international scene by signing on as a member of the Hague Agreement.

The Hague Agreement is an international registration system allowing applicants to file a single international design application in a single language to obtain protection in over 100 designated member countries. The US has been a member since May 13, 2015. China joined this year.

On 5 February 2022^[1], the Government of China deposited its instrument of accession to the 1999 Geneva Act of the Hague Agreement, being the 68^th contracting party to the 1999 Act and 77^th member of the Hague Union. This harmonizes certain aspects of China’s design patent law with global standards. As part of these new changes, the CNIPA (Chinese National Intellectual Property Administration) introduced a new section in the proposed Patent Examination Guideline (“the Guideline” thereafter) dedicated to the examination of Hague design applications.

Key interesting highlights or changes include:

• Protection period extended from 10 years to 15 years
• Applications must be filed in English (but can also provide a Chinese translation)
• Anyone with a business presence or residence in China can file in CNIPA/RO
• The International Bureau (IB) in Switzerland and the CNIPA in China will work closely together, IB handling most procedural matters while the CNIPA handles substantive matters

Below, we dive into more details about the major points and key procedures relating to these new proposed changes.

CNIPA as a Receiving Office of a Hague international application

Like for a PCT international patent application, applicants may submit a Hague international application to the CNIPA as a receiving office (RO).

The Guideline does not specify that any of the applicants must be a Chinese citizen or a Chinese company in order to use the CNIPA as the receiving office. However, at least one applicant must have a habitual residence or business office in China (consistent with the Hague criteria).

Below are the criteria for a Hague international application received from the CNIPA to be transmitted to the International Bureau (IB)^[2]:

1. at least one applicant has a habitual residence or business office in China;
2. at least one applicant chooses China as a Contracting State;
3. the application is written in English;
4. the application uses formal forms regulated by the Hague Agreement;
5. the application includes drawings or photos of the design;
6. correspondence information in mainland China written in Chinese is provided; and
7. the application document must not include information violating laws or social morality or that is detrimental to the public interests.

Please note that English is the only acceptable language of the application documents when the CNIPA is the RO. However, you may also submit a Chinese translation of the application documents if the application designates China.

Also similar to a PCT international patent application, the international filing date of a Hague international application designating China is deemed as the filing date in China.

The CNIPA can receive a Hague international application and its application fee, but the IB takes the role in receiving documents and fees in the later international procedures.^[3]

Examination of a Hague international application in China

Unlike the PCT, after the Hague international application is published by the IB, the CNIPA assigns a national application number and examines the application automatically without the need of a specific request from the applicant(s). After this point, the procedures with the CNIPA are in Chinese and the requirements for appointing a patent agency are also the same as for other types of regular Chinese applications^[4].

The formality and other requirements which are applicable to Common Regulations under the 1999 Act and the 1960 Act of the Hague Agreement are examined according to these Regulations. However, substantive requirements, other documents, and related procedures are examined based on Chinese Patent Law, Chinese Patent Law Implementing Regulations and Chinese Patent Examination Guidelines.^[5]

If the application has any substantive defect, the CNIPA examiner will issue a rejection notice to the IB^[6]. A response to the rejection notice must be written in Chinese, but the amended documents relating to the brief description, title of design and description of views, etc. must be in English^[7]. If the substantive defect(s) cannot be overcome, the Examiner will issue a rejection decision,^[8] and the applicant may request for re-examination, just like in the existing Chinese design application system^[9].

Grant of design patent right

If the application is allowed, the CNIPA will make an announcement for the grant of the design patent right. The design patent right in China is effective starting from the date of said announcement. The Guideline does not mention the issuance of a design patent certificate, but suggests applicant(s) request the CNIPA to issue a duplicate of the patent register book as proof of the design patent right in China^[10].

After the announcement date, the applicant should renew the design patent according to the requirements of the Hague agreement. If not, the design patent right will end upon the 5-years or 10-years date from the application date in China^[11].

Stay tuned for our upcoming articles for detailed discussions about the other changes. If you have questions or concerns regarding this new section of the proposed Examination Guidelines for the Hague System please feel free to reach out to us, and we will be happy to provide a personalized consultation.

This article is for general informational purposes only and should not be considered legal advice or a legal opinion on a specific set of facts.

1. https://www.wipo.int/hague/en/news/2022/news_0005.html ↑

2. Proposed Guideline Part 6 Chapter 1 Section 2.2.2 ↑

3. Proposed Guideline Part 6 Chapter 1 Sections 2.1 and 4.1 ↑

4. Proposed Guideline Part 6 Chapter 1 Section 3.3.1 ↑

5. Proposed Guideline Part 6 Chapter 2 Section 2 ↑

6. Proposed Guideline Part 6 Chapter 2 Section 3.2 ↑

7. Proposed Guideline Part 6 Chapter 2 Section 3.3 ↑

8. Proposed Guideline Part 6 Chapter 2 Section 3.4 ↑

9. Proposed Guideline Part 6 Chapter 2 Section 3.5 ↑

10. Proposed Guideline Part 6 Chapter 1 Section 3.5 ↑

11. Proposed Guideline Part 6 Chapter 1 Section 3.6.3 ↑

About the Authors

Polly Wong is a Patent Trainee at Eagle IP, a Boutique Patent Firm with offices in Hong Kong, Shenzhen, and Macau.

Yolanda Wang is a Principal, Chinese Patent Attorney, and Chinese Patent Litigator at Eagle IP, a Boutique Patent Firm with offices in Hong Kong, Shenzhen, and Macau.

Jennifer Che, J.D. is Vice President, Principal, and a US Patent Attorney at Eagle IP, a Boutique Patent Firm with offices in Hong Kong, Shenzhen, and Macau.