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Table of Contents – Protect Your Legal Rights After Design Patent Expiration in China
A design patent protects the ornamental design of a functional item, including shape and configuration, surface ornamentation, and the combination of both. Once the 15-year exclusive right from the date of grant expires, the primary concern for the right owner is whether there are any other routes to seek legal protection for the expired design. This article will answer this question in the context of copyright and provide practical guidance.
Copyright Protection
Some designs might fall into the scope of copyright protection, such as visual arts and product designs. Copyright could be one of the alternative solutions, but please bear in mind the following considerations.
The Difference in the Scope of Protection
Under the Copyright Law in China, the first question the authority will normally ask when considering if a design is copyrightable is whether the design is functional alongside creative and original aspects of the work. If the design was created to perform specific tasks in terms of an outcome or a process, it may not be eligible for copyright protection. If the answer is yes, unfortunately, you might have to look for other options rather than copyright.
The Difference in the Competent Law Departments
A design patent is granted by the Chinese Intellectual Property Office after satisfying all requirements through substantial examination procedures. In contrast, the National Copyright Administration of China manages copyright registration and certificates.
Although copyright is an automatic right once a work has been generated, China, as one of the territories in the world, provides a copyright registration system to confirm and enforce copyright. It is always sensible to file a copyright registration and secure a copyright certificate to confirm your right.
The Difference in the Protection Period
The duration of copyright protection varies depending on the type of work. For example, literary and artistic works are protected for the life of the author plus 50 years. For works of legal entities, the term is 50 years from the date of first publication. In comparison to the 15-year protection period of a design patent, copyright can work as a supplementary solution.
The Difference in the Standards for Determining Infringement
In short, a design patent must be new, original, and ornamental, while copyright concerns originality and fixation and requires a minimal degree of creativity.
In terms of copyright infringement, apart from factors like ownership and validity, intent, negligence, and damages, ‘Substantial Similarity’ and ‘Access’ are crucial considerations when the court determines whether copyright infringement has occurred. The ‘Substantial Similarity’ test determines if the copied elements are significant enough to constitute infringement, while Access means that the infringing party had a reasonable opportunity to view or hear the work before creating the alleged infringing work.
Relevant Precedents
There are opposing opinions on whether a work is eligible for copyright protection after its design patent expires.
The Negative Viewpoint
The design patent system was designed to grant a limited-term monopoly in exchange for protection. Once a design patent expires, its creation enters the public domain, allowing others to use it freely. This perspective was highlighted in the case of Xie Xinlin v Ye Genmu & Haining Mingyang Food Limited regarding copyright ownership and infringement dispute [Case No.: (2013) Zhejia Zhi Zhong Zi No. 5].
The Supportive Viewpoint
Supporters argue that in the field of intellectual property, a single subject matter can simultaneously have two or more rights coexisting without conflict. The loss of one right does not necessarily result in the loss of another. In the case between Changzhou Taomi Decoration Materials Co., Ltd. and Beijing Tepri Decoration and Finishing Materials Co., Ltd. regarding copyright ownership and infringement dispute [Case No.: (2015) Su Zhi Min Zhong Zi No. 00037], the court decided that when a design patent held by the rights holder expires, the copyright they hold does not expire. If it meets the requirements for copyright protection, the rights holder can still seek protection under copyright law.
Conclusion
The legal practice highlights the complexities of design patent and copyright disputes and the importance of establishing clear ownership and evidence of infringement. For comprehensive guidance on design patent protection in China, Lawdit Solicitors offers expert legal advice and support.
