THE ORDINARY OBSERVER

Filing Design Patent Applications in China and Taiwan

When filing design patent applications in China and Taiwan, the practitioner should be aware of unique filing requirements and potential pitfalls she may encounter when filing such applications, especially concerning the drawings. I just finished prosecuting several applications for various clients in China and Taiwan, and I thought this may be a good opportunity to review drawing filing requirements in these countries of growing importance.

In the United States, the rules are somewhat less strict with respect to multiple embodiments, shading and hidden features. When prosecuting a U.S. application, I have taken the approach of including all embodiments within a single application, with the hope that the USPTO will examine all embodiments. As far as representing the claimed design, I like to show all features, with solid lines illustrating “must have” components of the design and dashed lines illustrating non-essential components. Anyone who prepares and prosecutes a fair number of designs patent applications knows that it is not easy to decide what design elements are important (represented by solid lines) and unimportant (represented by broken lines or even deleted). With shading, I usually leave it to my draftsman, who does a nice job representing the surfaces of the claimed design.

In China, the practitioner needs to be aware that the Chinese Patent Office will require drawings without shading and broken lines. The elimination of shading and broken lines may impact decisions made during the U.S. filing. For example, rather than representing non-essential components with broken lines, perhaps it is a better practice to eliminate non-essential components totally. However, I am reluctant to adopt this approach since the claimed design may not be accurately represented. Regarding multiple embodiments, China adopts the same practice as the U.S. – the practitioner may file one or more divisional applications. I find consultation with my respective counterparts in each country to be the best tool for determining when the divisional application must be filed.

In Taiwan, while allowing shading and broken lines, the Taiwanese Patent Office requires that all embodiments must be represented in separate applications. Thus, when claiming priority to a U.S. application, for example, the practitioner needs to be aware that a multiple embodiment application needs to be broken into separate applications prior to filing. This may prove difficult when waiting until the last minute to file.

Prior planning can make it significantly easier for the practitioner when filing design patent applications in China and Taiwan. What has your experience been?