Why Prior Design Searches Matter: Value Before Filing And After Grant

On January 20, 2024, the amended Implementing Regulations of the Patent Law of China came into force. Rule 50 of the amended Regulations widens the scope of preliminary examination for design patent applications. Examiners must now check at this stage whether an application clearly fails the requirement of Article 23.2 of the Patent Law. Article 23.2 requires a design to be obviously different from prior designs. Before the change, this "obvious difference" requirement was a substantive standard. It is now expressly part of preliminary examination.

The Patent Examination Guidelines spell this out: "In preliminary examination, the examiner shall examine whether a design patent application clearly fails to comply with Article 23.2 of the Patent Law. Normally, the examiner may compare the claimed design individually with the prior designs available to the examiner to determine whether the application clearly fails to comply with Article 23.2." In practice, an examiner can now use