Why protect your design?
Design rights are territorial and limited to the country in which the design has been registered. Therefore, protecting your designs in China can help to prevent other parties from producing competing products in China for sale not only in China, but for export to other markets worldwide.
Design registration is particularly suitable for articles which are not new in their underlying concept, but which have been designed in a unique way to give them a more striking appearance or to make them more fit for the function they perform. Many products of industrial and other designers which, by their nature, are unsuitable for invention/utility model patent protection can be protected by a design patent.
In general, the registration of a design gives the owner the right to prevent third parties from making, selling or importing the articles bearing or embodying a design which is a copy, or substantially a copy, of the protected design. The protection is for the visual appearance of the product but not the feel of the product, what it is made from or how it works.
Not all designs are eligible for design protection by registration. If the design is not new, it will not be possible to get a valid design registration. A design is generally only considered to be "new" if it has not been publically disclosed (whether in a publication or on the internet) in China or anywhere in the world prior to filing a design application.
Designers must therefore be careful to avoid acts which would affect the novelty of their designs. Discussing and showing new designs to potential buyer/investors should be done on a confidential basis and non-disclosure agreement is advisable. Failure to do so may prevent designers from obtaining the registration of their designs as the design would be considered to have been disclosed to the public and would therefore not meet the requirement of novelty.
What is a Design Patent?
Chinese Patent Law provides for three types of Patent protection: invention patents, utility patens and design patents.
Invention patents provide protection for a product or process. Utility model patents only protect products, not processes. Design patents protect the appearance of a product and can be maintained for up to 10 years from filing. Design patents protect the appearance only, not the way that the product operates or functions.
A design is the overall appearance of a product. Under Chinese Patent Law, design patents cover any new design of the shape, pattern or colour of a product or the combination of these that creates an aesthetic feeling and that is suitable for industrial application.
Applying for a design patent.
Before filing an application, you should search existing design records. If your design is not new, any registration you receive could be revoked as a result of examination and your registration could be worthless. You may also face legal action if you infringe the design rights of the owners of other similar designs.
The design patent application process is relatively straight forward. An application can only be made by the owner of the design, an individual, a company, an association or a partnership. The documents required to a design patent application are a Power of Attorney; a brief description of the design, outlining the unique design features and drawings or photos of the design. The protection of the design is ultimately defined by the drawings/photographs depicting the design.
Once filed, the application is subject to preliminary examination to determine compliance with formal requirements and whether the design is new and not identical with or similar to any design which has been publically disclosed in China or abroad before the date of the filing.
After preliminary examination, the design patent will automatically be granted and the Chinese Patent Office will issue a registration certificate. The application process usually takes about 12 months and costs approximately EURO500.
Protecting and Enforcing your Design Rights
Once granted, a design patent protects the rights to that particular design. No entity or individual may, without authorization of the owner of the registered design, exploit the design by making, selling or importing any product incorporating the patented design.
As a registered owner, you have the exclusive right to use the design specified in your registration; have the exclusive right to authorise other people to use your design as specified in your registration; have a registered design that is your personal property that can grow in value and be sold; have a registration that covers the whole of China; and can take action to stop other people using your design after the granting announcement.
As the owner of a registered design you may sue for infringement if another person uses your registered design without your permission. You can also record your rights with Chinese Customs who will report any products for import or export that infringe your design patent.
You do not have to register your design to use it however, it is easier and more economical to protect and enforce your rights if you have a registered design.
Please feel free to contact registration@sflaw.cn for more information.