Chinese utility model patents
What can a utility model patent cover?
Any new technical solution which relates to the shape or the structure of a product, or to the combination of the shape and the structure of a product, i.e. utility model patents can be obtained for physical products, but not for methods or the composition of matter. Furthermore, the new technical solution must have utility. For example, a claim to an electronic circuit per se would not be allowable, but a claim to the electronic circuit as a product could be registerable.
What cannot be registered as utility model?
Methods and processes, products without a definite shape, products that have been changed by substitution of material or differences in manufacturing technique but have retained the same known form and construction, products characterized only by a planar pattern design without resolving a technical problem, or the molecular structure and components of a substance. Also not patentable are: computer programs, inventions contrary to the laws of the State, inventions contrary to social morality, inventions being detrimental to public interest, scientific discoveries, rules and methods for mental activities, methods for the diagnosis or treatment of diseases, animal and plant varieties, and substances obtained by means of nuclear transformation.
What is the requirement for utility models?
The requirements for filing are generally the same as those for filing a regular Chinese invention patent application, but the claims may include only one independent claim.
Where an applicant wishes to file both an invention patent application and a utility model patent application for the same invention, these must be filed on the same day with each accompanied by a notification identifying the filing of the other application. Once the invention patent is granted, the utility model patent must be abandoned otherwise the applicant risks revocation of the invention patent as the applicant is allowed to have only one patent in force for the (same) invention in China.
The utility model patent has a maximum term of 10 years. Where coincident utility model and invention patent applications are filed, the utility model patent may serve to protect the applicant’s commercial interests pending grant of the longer 20 year invention patent. There is a glitch, however, for those applicants who file PCT applications. Where an applicant has filed a PCT patent application and wishes to obtain patent protection in China based on the PCT application, the applicant must choose either an invention patent application or a utility model patent application, but not both, at the time of national phase entry.
Examination and grant
A utility model patent application can often be granted well within a year from filing largely owing to the fact that the application is subjected to only a formal examination procedure and not a substantive examination procedure. Consequently, if the formal examination shows the application to be in order, the application will proceed to grant in a relatively short time period compared to an invention patent application.
We suggest that, where a decision is taken to file a utility model patent application, the applicant considers whether it may be prudent to narrow to some degree the scope of the utility model independent claim (as compared to the scope of the claim the applicant would present for substantive examination in an invention patent application) in order to strengthen the “validity” of the utility model patent despite the fact that utility model patents have a lower standard of inventiveness than invention patents. Furthermore, as the formal examination of the utility model does take into account issues such as clarity and support of the language of the claims, we also suggest reviewing the claims to ensure that the language is not overly functional but does relate to the shape and/or structure of the product being claimed.
Invalidating a utility model patent
Invalidating a utility model patent is made difficult by the fact that the Chinese Patent Examination Guidelines 2010 specify that normally only one or two prior art references may be cited against the utility model patent for assessment of its inventiveness, although in some circumstances an Examiner may admit more pieces of prior art. Furthermore, utility models are assessed against their immediate technical field and to determine whether the invention has substantive features and represents progress over the prior art.
In contrast, an invention patent is assessed against its own and other relevant technical fields and to determine whether the invention has prominent substantive features and represents notable progress over the prior art. The lower threshold on inventiveness for utility models makes it more onerous on the opponent/defendant to show that the utility model is invalid. One ideally needs at least one piece of “knock-out” prior art to achieve this goal.
SIPO’s Patent Evaluation Report for a utility model patent in infringement proceedings is not binding on the Court or Patent Reexamination Board (PRB) and is seen as only one piece of the evidence to be considered. Thus, even where a negative report has been issued by SIPO, this may not be accepted by the PRB as invalidating the utility model patent.
Some reasons for considering utility models.
• Obtaining utility model patents is generally less expensive than invention patents and the rights are granted relatively quickly, e.g. normally within 6 to 12 months.
• The product being protected may be of a type that does not require more than the 10 years of protection provided by a utility model patent.
• Infringers may act quickly to copy the product and thus the utility model patent provides a basis for acting earlier against the infringers than would likely be the case with an invention patent.
• Chinese jurisprudence is evidence based. This requires documents as evidence to establish that a right being asserted is not valid. Although utility model patents are not substantively examined and therefore may be more open to challenge, it can still take very considerable efforts to obtain documentary evidence of sufficient quality to establish that a utility model patent is not valid.
• The Chint v Schneider patent infringement case in 2007 was widely reported because, at the time, it involved the largest patent damages settlement awarded by a Chinese Court to a Chinese company against a foreign entity. What was not widely remarked on at the time was that the case was based on a Chinese utility model patent.
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