On February 5, 2022, the Chinese government deposited its instrument of accession to the Geneva text of the Hague Agreement (1999) with the director general of the WIPO, thus becoming the Eighth Party to the 1999 text and the 77th member state of the Hague Union. The Geneva text of the Hague Agreement (1999) will enter into force in China on May 5, 2022.
In preparation for joining the Hague System, China amended the Patent Law on June 1, 2021. Important modifications related to design patents mainly focus on three aspects: 1) Increasing the protection period of design from 10 years to 15 years; 2) Provide protection for partial designs; 3) Design applications are allowed to claim domestic priority.
The greatest significance of China’s accession to the Hague System is that it opens a new door for Chinese applicants to obtain international protection of design patents. Since then, Chinese applicants can relatively easily realize the layout of design patents in as many as 94 countries and regions in a lower cost and more convenient way.
Over the past decade, China has been the largest applicant for design patents in the world. According to the statistics of the WIPO, in 2020, China received 770, 362 design applications, accounting for 55.5% of all design applications submitted worldwide. Design has been regarded by Chinese applicants as one of the most important factors to improve product competitiveness in addition to technological innovation. At the same time, it is also a sharp tool to explore the international market. It should be said that some design products applied in China have been quite competitive. For example, as early as September 16, 2019, the Beijing Winter Olympics Organizing Committee applied for four design patents for the mascots “Bing Dwen Dwen”, involving signs, labels, signs and mobile phone interfaces. This mascots combines the panda image with the super energy ice crystal shell. The shape of the head shell is taken from the ice and snow sports helmet and decorated with a color halo. The overall image is similar to that of an astronaut (as shown in the figure: right). The appearance design of the mascot means to create extraordinary, explore the future, and reflect the infinite possibility of facing the future. The Bing Dwen Dwen’s derivative products have been popular in the market, and are highly sought after by athletes and consumers. This fact reveals the rapid improvement of product design level in China to a certain extent.
According to the provisions of the Hague Agreement, the applicant can submit an international application for design through the Hague System as long as he meets the requirements of having a real and effective business place in a Contracting State of the agreement. Moreover, the International Bureau of WIPO does not verify whether the applicant’s qualification is true and valid, but the applicant is responsible for it. This way of submitting an international design application is known in the field as the so-called “compliance way of back door application”. Chinese enterprises with keen market insight have already applied for international design applications through their overseas offices in other Hague Contracting States. For this reason, according to the statistics of WIPO, China has ranked seventh in the source country of design applications in the Hague Agreement in 2020. However, in terms of the number of applications, there are only 361 after all. Even considering that under the Hague System, the applicant can submit an application to cover up to 100 industrial designs belonging to the same classification of products, it can be said that there is still a lot of room for growth compared with the 553,038 design applications separately applied by Chinese applicants to overseas countries in the same period. After May 5, 2022, to what extent will the Hague System affect the number of design applications applied by China abroad? It is really curious, and we can look forward to it together.
Of course, the benefits offered by the Hague System are twofold and two-way. The Hague System not only benefits Chinese applicants, but also provides a direct way for foreign applicants to submit international applications for design and seek protection in China, so there is no need to submit Chinese national applications separately. According to the statistics of the WIPO, in 2020, although the design applications submitted by foreign applicants in China accounted for only 2.34% of the total share, there were still 18,023 design applications in total. If a considerable part of design applications from abroad are submitted through the Hague System, it is also a new challenge for Chinese agents. On the one hand, the legal service fee and translation fee that can be charged will be reduced compared with the previous domestic application of acting as an agent for design; On the other hand, Chinese agents are required to provide more professional and valuable services in the smooth acquisition and protection of design rights.
Finally, in order to ensure that the international procedural mechanisms of the Hague System can meet domestic requirements, the parties to the Hague System can make some specific declarations. China is no exception and has made specific statements in six aspects. This includes not only more generally applicable declarations such as the application of separate designation fees and the extension of the rejection period to 12 months, but also specific declarations made by only a few Contracting States so far, such as a brief description of the characteristics of the design and the provision of some specific views of the products that will use the industrial design.
It is expected that the China Intellectual Property Office will continue to revise the detailed rules for the implementation of the patent law and the guidelines for patent examination, so as to continuously improve the rules for the examination of designs applied through the Hague Agreement. There is no doubt that all these deserve the keen and continuous attention of the applicants and relevant practitioners.
Written by HU Gang, CCPIT Patent & Trademark Law Office