How to protect your design patents in China

Design patents play an extremely important role in the intellectual property (IP) strategies of enterprises. The string of cases with a relatively major social impact that has occurred in recent years has drawn wide attention from Sino-foreign enterprises. In light of his practical experience acting as counsel for Honda in a series of design patent protection actions conducted in China, the author in this column examines some important issues in enterprises’ use of legal means to protect their design patents.

Importance of patent portfolios. Pursuant to Chinese laws, any prior disclosure of a design undermines its novelty, making it impossible to secure legal protection for it at the patent level. Accordingly, an enterprise must promptly file for a patent before releasing a product on the market, failing which it will find it extremely difficult to protect its rights. Cases in which the development of an innovation has been affected by an inadequate patent portfolio or patent strategy are not rare in practice.

Selection of remedies. Pursuant to current laws, a design is a new design that is aesthetically pleasing, suitable for industrial application, and made in respect of the form or pattern of a product, or a combination of these, or a combination of colours, form and pattern. China has incorporated designs within the framework of protection of the Patent Law and established a parallel two-track protection system that includes judicial and administrative protection.

Shi Yakai is an attorney-at-law at Sanyou Intellectual Property Agency