By Bo Qiao / Grandway Law Offices (Shanghai)
In the laws of Mainland China, a design of a product is an intellectual property right that can be protected by and through legal actions. The design can possibly be protected as two types of intellectual property right, which are, as a design patent and/or as a copyright.
For a new design that has just been created but not yet publicized, the creator can apply for the registration of a design patent and the copyright registration of the design in parallel. But for a design that has already been made public, the creator can only apply for copyright registration, and accordingly, protect it as a copyright.
The final goals or results of the protection via design patent or via copyright are in general the same, such as stopping the production and sales of infringing products, and getting compensation for damages. However, the paths and approaches of seeking for protection of a design as a patent or as a copyright are quite different. Below we will provide a brief introduction of the differences.
Differences in Protection Paths Available
When seeking for protection of a design as a copyright, the right holder may have two paths to choose: the first is to launch administrative investigation through the Copyright Office, and the second is to initiate litigation in the court. While for protecting a design as a patent, the main effective way is court litigation.
If a right holder seeks for protection of its design via copyright, the administrative approach can be more efficient than the court litigation. It usually takes 1 to 2 months for the copyright authority to investigate and punish the infringer. But it may take several months or even over a year to complete a court litigation for a copyright claim.
After investigating and punishing the claimed infringement through the copyright authority, the right holder may still continue to file a court lawsuit against the infringer to obtain financial compensations. The investigation and penalty decision made by the copyright authority could serve as a good supporting evidence for the court to uphold the claims of the right holder.
For some products designed outside of China but produced and/or sold in China, the creator may probably have registered intellectual property rights of the design outside of China, but not in Mainland China in the meantime. In such a case, the right holder may have missed out the priority of applying for a patent in China because the period of exercising such a priority is normally just 6 months under Paris Convention, commencing from the date when the creator first applied for a design patent outside of China. In such circumstances, if the right holder finds someone that has pirated his/her design in China, he/she will have to consider protecting the design as a copyright.
Procedures for Registering a Copyright and a Patent in Mainland China
The way to obtain a copyright registration of a design in Mainland China is to register the design with the China Copyright Protection Center (https://www.ccopyright.com.cn/). The registration takes about 2 months. The applicant needs to submit product photos, design drawings and/or models of the products, without a need of explaining or emphasizing the essential parts of the design. There is no need to pay an annual fee after the successful registration of the design. The protection period of design copyright is till December 31st of the fiftieth year after the first publication of the design.
The way to register a design patent in Mainland China is to file a written patent application with the State Intellectual Property Office (“SIPO”). Patent applications are usually drafted with the assistance of patent attorneys or patent agents, and the main points of protection (essential parts) should be proposed by applicant and searched by SIPO. If, after searching, SIPO finds that the main points of protection proposed by the applicant are different or not similar to any existing design, the design patent will be granted, otherwise rejected. Therefore, the time for the application for a design patent is usually 4 to 5 months, longer than copyright registration. The protection period of a design patent is 15 years according to the current Chinese law. After the patent is registered, the patentee needs to pay an annual fee every year to SIPO.
Differences between the Criteria of Determining an Infringement of a Copyright or of a Patent
To prove a copyright infringement mainly depends on whether the infringer's work is original and whether there is piracy. A patent infringement is established if the infringing objects are identical or similar to the patented design.
Therefore, to prove a copyright infringement requires more complex evidences. It is necessary to prove, among others, whether the work is obtained legally, whether it is original, the comparison of the pirated part(s), whether the pirated part(s) is an important part(s) of the design and the proportion of pirated parts as well. But the evidence required to prove a patent infringement is relatively simple, mainly the infringing objects themselves. And the comparison is also relatively simple, being about whether the infringing object and the patented design are the same or similar in whole and/or in the essential parts of the design.
Measures against Malicious Registers
To challenge a malicious registration of a design patent, the right holder can go to the State Intellectual Property Office (the “SIPO”) to apply for invalidation of the squatter's patent right. SIPO will determine whether the applicant is the prior original creator of the design based on the evidence provided by the applicant, and if it is, SIPO will declare the squatter’s patent invalid.
Unlike patents, to fight against a malicious copyright registration, applicants need to submit the disputes to the court for a decision first. If the court finds that the applicant’s design is original, it will issue a judgment to revoke the copyright registered by the squatter. The copyright authority can then revoke the malicious registration based on the court's judgement.