The original regulations of design patent priority claims based on the previous Patent Examination Guidelines stated that:
“The design disclosed in the drawings of a design patent application is required to comply with the requirement of ‘one design for one application.’ Accordingly, a design patent application can only claim one priority date for the claimed design. Claim to multiple priorities or a partial priority should not be accepted.”
“If a pending application or prior art – whose filing date or date of disclosure falls between the priority date and the filing date of the later-filed application – is found during the process of searching, it is required to check if the priority claim(s) is valid in view of the priority documents. In addition, reasons are required to be given if the priority claim(s) is deemed invalid. If necessary, the applicant should be notified and required to submit a full or part of Chinese translation of the priority documents. If such Chinese translation of the documents fails to be submitted, the priority claim(s) should not be accepted.”
That is, in the past, when the TIPO conducted substantive examination of a design patent application, it would examine whether the design disclosed in the claimed priority case is the same as the design application as filed. If not, the TIPO will issue an official notice requesting the applicant to respond. If a design application is found to claim multiple priorities, an official notice will also be issued to request the applicant to choose one of the priorities.
The TIPO announced on July 12, 2019 a new measure in managing priority claims of a design patent application that: ” In the future, the examiner will only examine the priority documents to decide whether the priority could be claimed when the date of application or publication of a prior application or the relevant data is discovered between the claimed priority date and the filing date of a later application. In principle, the priority claim will be published in the Patent Gazette as requested by the applicant if the above-mentioned condition is not found.” This measure has been effective on August 1, 2019.
Source: JAW-HWA INTERNATIONAL PATENT & TRADEMARK & LAW OFFICES
