As outlined in our previous post, partial design claiming in China continues to be a moving target, as variations in the interpretation of partial design claims persist among Chinese examiners. As of this writing, the Chinese National Intellectual Property Administration (CNIPA) has still not yet released formal guidelines or recommendations detailing partial claiming that is and is not acceptable after partial claiming in Chinese design patents became permitted on June 1, 2021. Still, trends have begun to emerge in some aspects of partial claim interpretation with respect to design titles, independent and complete design units, surface indicia and patterns, dividing lines, and simple geometric shapes. This post provides an update regarding the interpretation of independent and complete design units for partial design claims and offers guidance for protecting articles of varying sizes.
In the U.S., partial design claims often carve out discrete regions or portions of an entire article for protection, with no requirement that there is any relative independence or completeness of that portion in comparison with the entire article of manufacture. This is not true in China, where a claimed portion is required to be an independent and complete design unit. One way to characterize this requirement is that a “closed outline” must be formed by a structural line rather than a broken line, such as a dashed-dotted line. However, Examiners differ with respect to the requirements of a “closed outline” of a partial design claim. For instance, some examiners have permitted claims that include interruptions in a “closed outline” of an article, such as the example designs shown below in FIG. 1 and FIG. 2. On one hand, FIG. 1 depicts a claim for a refrigerator with a locking device shown in dashed lines in an upper corner, which may be considered an independent unit. On the other hand, FIG. 2 depicts a housing with a vent area that extends partially along a rounded corner, which does not appear to be an independent unit. Yet, the partial design claims of FIGS. 1 and 2 were allowed by their respective examiners.
Still, some examiners have taken a different stance by not accepting interruptions in a “closed outline.” For example, FIG. 3 shown below claims an enclosure with a rectangular window that is arranged on a side of the enclosure and forms a part of the front edge, where the edge of the window is disclaimed and represented in dashed lines. As with FIGS. 1 and 2 above, the article is represented in solid lines and the disclaimed portion is a sub-component, i.e., the window edge, which interrupts a structural line or edge of the claimed article. In contrast to FIG. 2 above, in the instance of FIG. 3, the examiner did not permit the partial claim because the dashed portion interrupts the “closed outline” of the enclosure.
This disparity in interpretations highlights the need for clarity and standardization with regard to partial design claiming in China, especially for applicants from other countries that allow such partial claims. Until such standardization or clarity is provided, applicants may find it beneficial to file multiple partial designs of varying scope in China as a way to hedge their bets against unfavorable interpretations among examiners.
In another aspect, partial design claims are often useful for protecting articles of varying sizes or dimensions, such as a decorative curtain rod that can vary in length, but such a claiming strategy in China may be rejected as failing the requirement for an independent and complete design unit. However, it is possible to traverse this rejection by using the proper conventions for dividing the design along the dimension(s) to be varied. In particular, applicants can clarify that the claim relates to an indeterminate length, rather than a division of a claimed structure into discrete design units. For example, the design of FIG. 4 shown below was rejected due to the division of the design into incomplete design units. To overcome the rejection, the examiner recommended amending the design, as shown below in FIG. 5, to include the parallel dashed-dotted boundary lines without a dashed line extending between the dashed-dotted lines, since this is an acceptable way of showing a design of an article with indeterminate length in China.
It is important to note that claiming indeterminate length only applies in certain situations and may not be appropriate for traversing a rejection alleging an incomplete or divided design unit for a claim similar to the design in FIG. 3. As noted above, it may be beneficial to file multiple partial designs of varying scope in China as a way to hedge one’s bets against unfavorable interpretations among examiners.
Key Takeaways
1. Some examiners require that a partial design include an uninterrupted “closed outline” formed by a structural line or edge of the claimed, while others permit interruptions along such edges.
2. An indeterminate length can be properly shown by parallel dashed-dotted boundary lines for partial design claims protecting articles of varying sizes.
Next Steps
While there appear to be some patterns emerging with partial design claims in China, the lack of guidance for partial design claiming should not deter design applicants from filing design applications. Design patents offer unique protection for manufactured products and devices, and various, strategic filing strategies can be implemented to overcome rejections of partial design claims and ultimately gain design patent protection. Additionally, patterns will continue to emerge for partial design claims in China.
The information in this blog post was adapted from communications with Liu, Shen & Associates and Tuo Ying Law Offices.
