Similar to the minor inventions in Australia, Germany, Japan and Korea, China accords patent protection to utility models ("UM"). Although the system is intended to protect relatively minor advancements over existing technology, utility model patents can be a powerful weapon to patentees since they are quick and easy to obtain and yet carry the same remedies as invention patents, including monetary and injunctive relieves.
The Pros and Cons of UM in China
1. Fast registration and same protection
There is no substantive examination on utility models. Comparing with the 2-5 years that it can take for an invention patent to get the allowance, the registration of a utility model patent can be granted within 6-12 months. Such registration provides the same protection as an invention on the patented products. The basis for claiming damages and the available remedies are also the same.
2. Lower standard for inventiveness requirements
In CNIPA examination, the novelty requirement for utility model is the same, but the standard of inventive step for a utility model is lower than that for an invention. For a utility model with a much shorter term of protection, the law requires “a substantive feature” and indicates “an advancement”, which is a lower standard comparing with an invention patent, which must have “a prominent substantive feature” and indicates “remarkable advancements”. Utility model patents are particularly well suited to protecting improvements or modifications of existing products which may not necessarily satisfy the requirements for an invention patent.
Moreover, such lower inventiveness requirements mean that, in addition to an easier allowance, utility model patents can be more difficult to be invalidated than an invention patent, which is a surprising result from lowering the bar of patentability. This is different from the German practice, which requires the same standard on patentability for both invention and utility model.
3. Cheaper application fees and maintenance costs.
For utility models, examination is simplified and protection term is reduced. Naturally, the costs for obtaining and maintaining a Utility Model patent are substantively cheaper.
1. Limited scope of subject matters
Different from the German practice, UM patents in China are only available to products with definite shape, structure and the combination thereof. Chinese UM is therefore not suitable for methods and product of drugs, chemical entities or new materials.
2. Shorter term of protection
In China, the protection term for utility model is 10 years from the filing date. This reduced term of protection may be suitable for products with shorter lifespans.
3. Uncertainty on the enforceability
To enforce a UM patent in the court or via administration actions, the patentee has to obtain a UM patent evaluation report from CNIPA, essentially an office action in substantive examination with allowance. The report fee is almost the same as a patent examination fee. Similar as the uncertainty in patent examinations, a favorable evaluation report for the UM is not guaranteed. Therefore, the enforceability of a granted UM patent has to be confirmed by a post-positioned examination and the uncertainty is inherent in the UM patent granted without a substantive examination.
Duo Filings of Invention and UM in China
Similar to the German practice, it is possible to file an invention patent application and a utility model patent application simultaneously for the same subject matter in China. Without substantive examination, the utility model patent will be granted first quickly. If the invention patent is subsequently allowed for the same subject matter, the applicant will then have to abandon the utility model patent in exchange for the grant of the invention patent.
Through this duo filing practice, the patent owner can enjoy the benefits of fast issuance of the utility model patent, as well as the advantage of longer term protection of the corresponding invention patent on the same subject matter, if granted. However, started from 2010, (MPEP Part 5 Chapter 7.8.2) the fast track prioritized examination isn’t available to an invention with a duo filed UM. The examination of a parallel invention will be delayed.
Issues on Claiming Foreign Priorities
China is a member country of Paris Convention. UM protection is available to foreign applicants, along with the duo filing benefits. The issue of foreign priority claims is, however, complicated, which is different from a PCT application with its own priority claim entering into the national phase in China. Although such PCT application is deemed as a Chinese national application itself, it can only choose one type of protection upon Chinese national entry, either as an invention, or as a utility model.
Although no duo filing is available for PCT’s national entry in China, a PCT application can serve as a priority document under certain condition to support a national application with duo filings, which will be discussed below.
1. UM Applications Based on Foreign First Filing
In 12 months, a UM application can be filed in China claiming priority on an early filed foreign patent application of invention OR utility model, so long as such prior application is the first filing on the same subject matter. Such UM filing takes the route of Paris Convention, which can be a duo filing application on both UM and invention in China.
2. UM Based on PCT Application (with priority claim(s))
China has strict requirements against double patenting and applies filing restrictions on PCT national phase entries. A PCT application must choose the type of application either as an invention or as a utility model, but not both, at the time of national phase entry. An applicant desiring duo filing benefits to pursue both a utility model and an invention for the same subject matter of technical solutions, may consider bypassing the PCT route and file utility model and invention applications simultaneously in the 12 months period of the earliest priority application in the PCT, and claim priority from the same priority application(s) as in the PCT application.
Furthermore, in 12 months of the PCT filing date, a Chinese application can be filed based on the PCT application, if the PCT is qualified to be a priority application, i.e. only to the extent that the PCT serves as the first filing on the subject matters. Since Chinese patent law requires the priority application must cease to be pursued, such PCT application cannot enter into national phase in China anymore. An important concern of this route is the requirements on priority PCT application being the first filed application on the technical subject matters, which means, a PCT claiming priority on a previously application on the same subject matter may not serve as a priority application for later application, or the PCT application has to be claimed along with its own priority application filed less than 12 months before the Chinese filing (as elaborated below).
3. Based on Multiple Foreign Priorities
Based on Paris Convention, a Chinese application can claim multiple foreign filings as priority basis, so long as the filing date of the earliest priority filing is in 12 months of the Chinese application date. Thus, a PCT claiming priority on a previous application may be claimed along with its own priority application filed less than 12 months before the Chinese filing. One caveat is that the subject matters’ priorities may have different dates as in their respective priority filing documents.
The Chinese utility model patent is one of the most used types of protection under the Chinese Patent Law. If applied correctly, a utility model patent can be a significant IP right either standing alone, or complementing an corresponding invention patent. It is therefore important for companies to understand the strengths and weaknesses of the system and to build their own utility model portfolios in China.