We are grateful to three fine Chinese firms (and, as always, any misunderstandings or errors are almost certainly at our end); Unitalen have a summary of the effects of the new Regulations in their Newsletter Special Edition of 26 January 2010, Sanyou have a comparative table setting out the differences between the old and new Regulations in their newsletter of 31st March 2010, and CCPIT have published a consolidated version of the current Regulations here.
Three particular provisions strike us as interesting. Firstly, under new Rule 35, the conditions for filing "multiple design" applications are tightened. All products concerned must be in the same class. There can be no more than ten in the same application. There must be a basic design and the other designs must be similar to it (though not necessarily to each other).
Secondly, the requirements for the mandatory the "brief description" are clarified. We quote from CCPIT's translation of Rule 28:
A brief explanation of a design shall include the title and usage of the product incorporating the design, the essential portion of the design, and designate a drawing or photograph which best represents the essential portion of the design. Where the views are omitted or there are colors for which protection are sought, it shall be indicated in the brief explanation.
Where one application for a patent for similar designs incorporated by the same product is filed, one of the designs shall be designated as the basic design in the brief explanation.
The brief explanation shall not contain any commercial advertising and shall not be used to indicate the function of the product.
In this Rule, the requirements for indicating the "basic design", the name and the usage of the product, and the most representative drawing, are new.
New Rule 31 deals with the very common situation where the priority filing lacks such a brief description (it is not mandatory in EU or the US for example). It provides that priority is not lost provided that the brief explanation submitted in China does not go beyond the scope of the drawings or photographs in the earlier application. However, it seems doubtful whether the "usage", for example, would always be described in the earlier application, so the comfort offered by Rule 31 is limited. It may be safest to file a China-compliant description in their priority application even where it is not mandatory (or even where it is forbidden) to do so.
The third interesting provision concerns designs made by employees (or, as we should perhaps call them in this context, the working class). Rules 76-78 provide that (where there is no contract governing the matter) the employee is entitled to compensation comprising "prize money" (due within three months of grant) of at least 1000 yuan (about $150), and thereafter a royalty of at least 0.2% of profits from the design. If the rights are licensed, the designer is entitled to 10% of the incoming royalties.
Personally, I am in favour of such employee compensation schemes (provided they don't break the bank), as they have the advantage of getting at least the designers on board for IP protection in an IP-sceptic world. These fairly modest Chinese provisions are the first I have seen in relation to designs. The prize money is a third, and the royalty rate a tenth, of that for an invention patent and, whilst there is no micrometer for quantifying such things with precision, the lower level of compensation seems appropriate as designs tend to be easier to design around and have been subjected to less scrutiny as to validity. What do readers think?
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