China Joins the Hague System of Industrial Designs
As the Year of the Tiger begins, WIPO announced the exciting news that China has decided to join the Hague System for the International Registration of Industrial Designs, to be effective from May 5, 2022. With Korea, Japan, the United States and United Kingdom all joined in recent years, China' s joining means that the contracting parties to the Hague System now include almost all of the world' s major economies.
Broadly speaking, from May 5, 2022, a non-resident of China will be able to secure international design protection in China, one of the world' s largest and most dynamic markets. At the same time, companies and designers in China will have, in many ways, a quicker and easier option to seek international protection of their designs in the 94 countries covered by the Hague System.
As allowed by the Hague System, contracting parties can make certain declarations to ensure that the international procedural mechanism of the Hague System accommodates their own domestic laws, regulations and other requirements. Notable declarations include United States' requirements that claim and oath or declaration of the creator being part of the mandatory elements of the international application, requirements of certain views of the design by Republic of Korea, and security clearance requirement by Russia and the U.S.
China' s instrument of accession to the 1999 Geneva Act of the Hague Agreement includes the following six declarations: (1) A brief explanation of the characteristic features of the design(s) is required as part of the mandatory elements of the international application, (2) Individual designation fee applies, (3) Unity of design and specific views of designs are required, (4) Extension to 12 months of the refusal period, (5) Extension up to six months of date of effect of the international registration, and (6) Supporting documents for a change in ownership are required.
It is worth noting that China' s instrument of accession also specified that, until otherwise notified by the Chinese government, the 1999 Act will not be applied in the Hong Kong Special Administrative Region or the Macao Special Administrative Region. Therefore, Hong Kong and Macao will continue to be separate jurisdictions regarding industrial designs.
While the above Declarations by China seem relatively routine by nature, we note that detailed requirements in this regard, in the forms of revised Rules for the Implementation of the Patent Law of China and the Patent Examination Guidelines, have not been finalized by the State Council and CNIPA. As we know, joining of the Hague System does not mean any change in the substantive legal requirements of the individual contracting countries. Therefore, an international application designating China should still comply with all requirements of relevant Chinese law and regulations. In this regard, we think that special attention should be given to China' s Declarations (1) and (3), namely the requirements regarding brief explanation of the characteristic features of the design(s) and specific views of designs. In addition, China also has specific requirements regarding eligible subject matters for designs and number of similar designs allowed in one application. As practitioners know, China' s relevant requirements in these regards can be particular and detailed. In this regard, we strongly recommend that applicants for international applications designating China seek advice from Chinese patent attorneys before filing the international application, as it would probably be too late to address certain specific Chinese requirements once the international application has been filed.
China' s joining of the Hague System provides a great option for foreign designers seeking protection in China, as well as for Chinese designers seeking international protection. At the same time, the upcoming detailed regulations and rules from the State Council and the CNIPA will be very important for designers and applicants to fully take advantage of this opportunity. We will monitor and keep you informed of any developments in this regard.
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