the similar and different regulations
on industrial designs
between china and canada
he zijing
abstract:
with china entering wto, more and more chinese industrial designers want to apply internationally to register their designs outside china. this paper shows you the detailed comparison about regulations concerning industrial designs between china and canada, gives some suggestions about the process to register internationally to protect chinese applier. some hints imposed on the difference between the two countries will help to improve our patent law.
keywords:
industrial design, china, canada
1. general introduction on industrial designs
1.1 what is an industrial design?
1.1.1 of wipo
an industrial design is the ornamental of aesthetic aspect of an article. the design may consist of three-dimensional features, such as the shape or surface of an article, or of two-dimensional features, such as patterns, lines or color. industrial designs are applied to a wide variety of products of industry and handicraft. to be protected under most national laws, an industrial design must appeal to the eye. this means that an industrial design is primarily of an aesthetic nature, and does not protect any technical features of the article to which it is applied.
1.1.2 of china
design in the patent law means any new design of the shape, the pattern or their combination, or the combination of the color with shape or pattern, of a product with creates an aesthetic feeling and it fits for industrial application.
1.1.3 of canada
design of industrial design means features of shape, configuration, pattern or ornament and any combination of those features that, in a finished article, appeal to and are judged solely by the eye.
1.2 other forms of intellectual property
in china, intellectual property can be generally classified as patent, copyright, trademark. patents, or in other words, inventions-creations, mean inventions, utility models and designs. so that the designs are one of the subdivisions of patents.
whereas, in canada, in addition to industrial designs, there other forms of intellectual property, as patents, copyrights, and integrated circuit topographies. hereby, patents cover new inventions (process, machine, manufacture, composition of matter), or any new and useful improvement of an existing invention. so that industrial designs have the equal statues to patents, as one of the subdivisions of intellectual property.
1.3 why protect industrial designs?
industrial designs are what make an article attractive and appealing; hence, they add to the commercial value of a product and increase its marketability.
when an industrial design is protected, the owner-the person or entity that has registered the design-is assured an exclusive right against unauthorized copying or imitation of the design by third parties. this helps to ensure a fair return on investmen
t. an effective system of protection also benefits consumers and the public at large, by promoting fair competition and honest trade practices, encouraging creativity, and promoting more aesthetically attractive product.
protecting industrial designs helps economic development, by encouraging creativity in the industrial and manufacturing sectors, as well as in the traditional arts and crafts. they contribute to the expansion of commercial activities and the export of national products.
industrial designs can be relatively simple and inexpensive to develop and protect. they are reasonably accessible to small and medium-sized enterprises as well as to individual artists and craftsmen, in both industrialized and developing countries.
1.4 how can industrial designs be protected?
in most countries, an industrial design must be registered in order to be protected under industrial design law. as for china, the regulations on design are under the patent law of people’s republic of china (prc) and its implementing regulations; as for canada, the industrial design act and industrial design regulations details the regulations that govern design rights. as a general rule, to be registerable, the design must be “new” or “original”. different countries have varying definitions of such terms, as well as variations in the registration process itself. generally, “new” means that no identical or very similar design is known to have existed before.
depending on the particular national law and the kind of design, an industrial design may also be protected as a work of art under copyright.
2.the main difference concerning registration
2.1 when to file an application
there is no time limit for filing an application as long as the design had never been published. the term “published” means that the design has been made public (even to your neighbors) or offered for commercial sale or use anywhere in the world. it is best to file an quickly as possible if publication has occurred.
in china, an design application does not lose its novelty where, within six months before the date of filing, one of the following events occurred: [1] where it was first exhibited at an international exhibition sponsored of recognized by the chinese government;[2]where it was first made public at a prescribed academic or technological meeting;[3]when it was disclosed by any person without the consent of the applicant.
in canada, the design shall be refused to be registered if the application is filed more than one year after the publication of the design in canada of somewhere.
2.2 who can apply?
only the proprietor of a design may apply for and obtain registration for an industrial design both in china and canada, while there exists little difference between the two countries on the question that who can be defined as proprietor.[1] usually you are considered the proprietor if you have created the design;[2] if you work together with other person to cr
eat a design, you should file for registration as joint proprietors ( unless you are all working under contract or commission );[3] if you have acquired ownership of a design, then you may apply;[4] if you are employee of a company and develop design as part of your employment, then the employer may be the proprietor. in that case, only the employer may apply in canada; while in china, the entity and the inventor or creator may enter into a contract in which the right to apply for and own the exclusive right is provided for;[5] if you have been hired under contract to develop design for someone else, then that person is the proprietor and is the only one entitled to apply for registration in canada; whereas in that case in china, the right to apply for registration belongs, unless otherwise agreed upon, to the entity or individual that made the design.
2.3 what requirements to make designs registerable?
in canada, the minister shall register the design if the minister finds that it is not identical with or dose not so closely resemble any other design already registered as to be confounded therewith, and shall return to the proprietor thereof the drawing or photograph and description with the certificate required.
in china, any design for which patent fight may be granted must not be identical with and similar to any design which, before the date of falling has been publicly disclosed in publications in the country or abroad or has been publicly used in the country, and must not be in conflict with any prior right of any other person.
2.4 what you cannot register?
in canada, you cannot register the following under the industrial design act: [1] designs that are utilitarian only and which are not intended to provide visual appeal; [2] designs that have no fixed appearance; [3] designs for components that are not clearly visible; [4] a method of construction; [5] an idea; [6] materials used in the construction of an article; [7] the useful function of the article; or [8] color.
in china, for any of the following, no patent right shall be granted: [1] scientific discoveries;[2] rules and methods for mental activities;[3] methods for diagnoses or for the treatment for the diseases;[4] animal and plant varieties;[5] substances obtained by means of nuclear transformation.
from the above regulations, we can see that the chinese regulations is more generic for all of the three types of creation-inventions; and the canadian’s is more special in detail on designs. so we should absorb some of them in our implementing regulations of patent law.
2.5 searching of office record prior to filing an application
prior to filing an application, you may wish to conduct a search of office records in order to better determine whether your design is truly new and original. this will give you the opportunity to see other registered designs. you should also keep your design confidential.
2.6 how long the process takes?
in canada, the offi
ce dose not register any design until six months after the date of filing. normally it takes between eight and twelve months to have your application examined. while in china, there is no such kind of provisions concerning the term of process of designs.
2.7 duration of protection
both in the two countries, duration of protection of industrial designs is for ten-year term, while the beginning date is quite different. in canada, it is the date of registration-usually six months after the date of filing; in china, it is the date of filing. once the ten-year term has expired, anyone is free to make, import, rent or sell etc., the designs.
2.8 extension of protection
in canada, your application must include a description which identifies the features that constitute the design since the court may use your description to help determine the limits of protection for your design, you should word your description with care and precision. if your description is too broad, you may over-extend the scope of the design, and it may be impossible to enforce. if it is too narrow, you may limit the scope of the design or leave out features that you intended to protect.
in china, the extend of protection of the patent right for design shall be determined by the product incorporating the patented design as shown in the drawings of the photographs.
2.9 preparing your application
an application for registration of an industrial design has three basic elements as: [1] the application form;[2] at least one drawing or photograph of the design; and [3] the required fee(s). the application must include a title that identifies the finished article to which the design is applied. it should be the common name used in the trade. the description, along with drawings and title, must provide an actual picture of the design.
only for canada, each industrial design application must be limited to a single design or to “variants”. variants are designs which do not differ substantially from one another. you may add variants of the design to your application anytime before registration.
2.10 fees
in canada, you must pay a fee to make your application examined by the industrial design office. there additional fees for maintenance and late payment of the maintenance fee of designs. before the expiry of five-years from the date of registration, a maintenance fee must be paid or the protection will cease.
in china, you shall an annual fee beginning with the year in which the exclusive right of design was granted. failing to pay the annual fee will result in ceasing of protection before the expiration of its duration. the maintenance fee just exists in field of applying for a patent for invention. that is where the applicant for a patent for invention had not been granted a patent right within two years from the date of filing; the applicant shall pay a fee for the maintenance of the applicant from the third year.
3. the main regulations on process
3.1
the similar process of obtaining a design registration
the process of obtaining a design registration is made up of three distinct phases:[1] initial processing ( when you first file the application) [2] examination;[3] registration
3.1.1 initial processing
your application will undergo preliminary review by staff to ensure that basic administrative requirements have been met. if the application is complete a filing certificate will be issued; this is merely an acknowledgement that the application has been received and processed a filing date issued. it also gives you the number assigned to your application so that you can refer to that number in later correspondence. if the application is incomplete, you will also receive a report, advising you of what is required to complete it. every report issued by the office will give a due date for reply. if you do not reply by that due date your application will be considered abandoned.
3.1.2 examination
the first step in this phase of the process is the classification of your application according to the particular type of article to which it relates. this is followed by a formal assessment by an examiner who will study your description and drawings or photographs. this will then be compared with previously registered designs and designs published anywhere in the world to ensure that your design in original or registerable. you design cannot be the same or similar to a design already applied to a similar article of manufacture. the wording of the description will also be considered to see that it actually and adequately describes the design features shown in the drawings. following this assignment the examiner will either allow the application for registration or issue a report. the report will outline the examiner’s findings and tell you what information or amendments are required.
should different people apply to register essentially the same design, the office will examine the applications on a first-come, first-served basis. the application with the earlier filing date will be registered.
3.1.3 registration
once approved by the examiner your design will be registered as soon as possible provided you have not requested delayed registration. you will receive a certificate of registration. this certificate is evidence of ownership and the originality of your design and gives you the exclusive right to make, import for trade or business, rent or sell or expose for sale or rent, any article in respect of which the design is registered and to which the design is applied.
3.2 the different process of obtaining a design registration
the process of requests for delayed registration only exist in canada. it is possible that you may want to delay registration. for example, you may wish to allow time to market or file your design out of canada. in this case, you should inform the office in writing. you may exercise the option to delay registration at the time of filing your applica
tion or at any time before it is registered.
4. the main regulations on proprietor’s rights
4.1 marking rights on a product or it’s packing
the patentee has the right to affix a patent marking and to indicate the number of the patent on the patented product or on the packing of that product. you do not have to mark your design in order to indicate that it is registered as a design, but marking dose give you extra protection. the proper mark is a capital “d” inside a circle and the name, or abbreviation thereof, of the design’s proprietor on the article, its label or packaging.
4.2 enforcing your rights from infringement
as proprietor, you may take legal action against anyone who infringes your design in canada, it is your responsibility to take such action and you must do so within three years of the alleged infringement.
in china where a dispute arises as a result of the exploitation of a patent without the authorization of patentee, that is, the infringement of the patent right of the patentee, it shall be titled through consultation by the parties. where the parties are not willing to consult with each other or where the consultation fails, the patentee or any interested party may institute legal proceedings in the people’s court or request the administrative authority fall patent affairs to handle the matter. prescription for instituting legal proceedings concerning the infringement of patent right is two years counted from the date on which the patentee of any interested party obtains or should have obtained knowledge of the infringing act.
4.3 marketing rights
in both countries, as the proprietor of a registered industrial design, you have the exclusive right to make, import for trade or business, rent or sell a product incorporating that or a similar design. you may also sell all or some of your rights to others( this is referred to as an assignment) or, you can simply authorize others to use the design subject to stated conditions( this is referred to as a license).
4.4 registration outside the native country or for international protection
generally, industrial design protection is limited to the country in which protection is granted. under the hague agreement concerning the international deposit of industrial designs, a wipo-administered treaty, a procedure for an international registration is offered. an applicant can file a single international deposit either with wipo of the national office of a country which is party to the treaty. the design will then be protected in as many member countries of the treaty as the applicant wishes.
it is important to note that in some countries your application could be rejected if you or someone else has previously registered the design.
4.5 priority rights
procedures for obtaining international design rights are partially governed by an international treaty called the paris convention for the protection of industrial property. the paris convention, which h
as some 90 member countries, including canada, allows applicants to invoke what is called “ convention priority”. this means that someone who has filed for design registration in one convention country has six months in which to file an application for the design in another country and be accorded the same rights as if h/she had filed in the second country on the original filing date.
references:
l industrial design act of canada (r.s.1985,c.1-9)
l industrial designs regulations of canada (1-9-sor/99-460)
l patent law of the people’s republic of china(amended on august 25,2000)
l implementing regulations of the patent law of the people’s republic of china(promulgated on june 15,2001)
l paris convention for the protection of industrial property.
l patent cooperate treaty
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