The international registration of designs through the Hague System provides a convenient avenue for applicants; however, due to differences in review procedures and regulations, challenges often arise during the national phase. This article explores common issues encountered in international design applications under the Hague System designating China and provides preventive measures to enhance the likelihood of a successful registration in China.

1) Missing View in Design Submission

According to the Examination Guidelines of Chinese Patent Law, so far as the product with a three-dimensional design is concerned, if the essential features of the design of the product involve six sides, the applicant shall submit orthographic projection of six-side views; if the essential features of the design of the product involve the view of one side or several sides only, the applicant shall submit at least orthographic projection view and space diagram of the side concerned, and indicate the reason of the omission of the view in the brief explanation.

Therefore, the views of the design submitted by the applicant must be based on the nature of the product and the essential features of the design of the product.

2) Non-Compliant "Brief Description of Design":

A design application in China needs to be submitted with a brief description of the design. The brief description of the design includes: the title and use of the design of the product, the essential features of the design, and a drawing or photograph that is designated to best show the essential features of the design. The essential features of the design refer to the shape, pattern, or their combination, or the combination of the colour with shape or pattern, or the position, which is different from prior design. If the design application is a partial design, the part for which protection is sought must also be indicated in the brief description.

However, according to Interim Measures of Related Provisions after China's Accession to the Hague Agreement Concerning the International Registration of Industrial Designs, Article 4, if the international application published by the International Bureau includes a description showing the main characteristics of the design, it shall be deemed that a brief description has been submitted under relevant provisions.

In the context of an international design application designated for China, a failure to align with the prescribed drafting format by CNIPA in the DM1 form may result in a notification of refusal.

In practice, the reason for receiving such a notification of refusal is usually because of failure to specify that the essential features of the design involve shape, pattern, or their combination.

To circumvent the risk of refusal, it is imperative for the applicant of international design applications designating China to note that the description must include the essential features of the design.

3) One application contains multiple designs

Under the Hague System, an international design application can conveniently include up to 100 designs. However, when designating China, specific considerations must be observed. Unlike the flexibility offered by the Hague System, where multiple designs are accepted, Chinese regulations dictate that, unless the designs are similar designs or multiple designs for products sold in sets or used in sets, each application should feature only one design. Filing an application with multiple non-similar designs or incomplete sets of product designs will prompt CNIPA to issue a notification of refusal after the examiner's review. To prevent such refusals, an applicant should avoid including multiple non-similar designs or incomplete sets when filing an international design application.

In the event of receiving a notification of refusal, the applicant has the option to address it by selecting and retaining one design, or multiple similar designs, multiple designs for products sold in sets or used in sets. Any designs that are removed can be subject to a new application through the filing of a divisional application with CNIPA.

Timing is critical when filing a divisional application. The applicant of an international design application can file a divisional application to CNIPA within two months from the date of international publication. If the applicant files a divisional application in accordance with the examination opinion, it must be done within two months from the domestic announcement date of the original application at the latest. It's important to note that after this specified period, or if the original application is rejected or deemed withdrawn without rights restoration, further divisional applications are generally not permitted.

4) Copy of Earlier Application Documents were not submitted

For an international design application under the Hague System claiming priority, in which the applicant didn’t provide the DAS code and did not submit the attachment V form of the DM/1 form with a copy of the earlier application documents, the applicant will need to submit the DAS code or the copy of the earlier application documents to the CNIPA within 3 months from the date of international publication. If the DAS code or the copy of the earlier application documents are not submitted within the time limit, the application will be deemed that priority has not been claimed.

In this situation, according to Interim Measures of Related Provisions after China's Accession to the Hague Agreement Concerning the International Registration of Industrial Designs, Rule 6 of the Implementing Regulations of the Patent Law shall not apply to international applications in which no priority claim is deemed to have been filed. That is to say, after the international design application is deemed not to have claimed priority, the applicant cannot request restoration of rights within two months from the deadline of responding to the office action like a design application filed directly in China.

To avoid the potential loss of novelty and associated complications, applicants filing an international design application that claims priority should be meticulous about submitting the DAS code or copies of the earlier application documents within the prescribed time limit. This proactive step ensures that the priority claim is recognized and preserves the integrity of the application, preventing any adverse consequences stemming from a failure to meet this critical requirement.

5) Miss the deadline to respond to the notification of refusal

Following the examination of an international design application, CNIPA issues a notification of refusal for any identified defects, transmitting it to the International Bureau. Typically, the applicant has a four-month window to prepare and file a response to address the issues outlined in the notification. However, in cases where an applicant inadvertently misses this deadline, there is an avenue for remediation through a request for restoring rights.

According to the relevant provisions outlined in the Examination Guidelines of Chinese Patent, applicants can file a request to restore rights within two months from the original deadline for responding to the notification of refusal. This provision provides a crucial opportunity to rectify the oversight and continue the application process.

To navigate this process successfully, applicants must stay vigilant for relevant notices from the International Bureau and respond promptly to notifications of refusal. while missing a deadline can pose challenges, the opportunity for rights restoration offers a second chance for applicants to address deficiencies and proceed with the international design application. Diligence in monitoring notices and swift action are key elements in navigating this aspect of the application process effectively.

The above are some common issues in the international design applications under the Hague System designating China. In summary, a proactive and informed approach, coupled with a comprehensive understanding of the distinctive aspects of national phase procedures, is paramount for achieving successful patent rights in the realm of international design applications under the Hague System.