Utility model applications and protection in China
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A useful IP asset, the utility model patent costs less to acquire and is quicker to obtain than an invention patent. In addition, utility models present a paradox: a patent, which is the more difficult to obtain, is easier to invalidate than a simple utility model, which can be granted based on a simple formality examination.
Under the Patent Law, a ‘utility model’ refers to any new technical solution relating to the shape, structure or a combination thereof of a product which is fit for practical use. It does not cover a process or method. The duration of protection is 10 years from the filing date.
Utility model patent applications and post-grant proceedings
Utility model applications do not undergo substantive examination; they are subject only to a formality examination.
Drafting and prosecuting a utility model application
To ensure that the application passes the formality examination, the following requirements must be met:
- The claimed subject matter and the title of the application constitute a product defined by shape, structure or a combination thereof.
- Independent claims include the transitional phrase “characterised in that…”, so that the claim is demarcated into two parts (ie, preamble and characterising portions).
- Dependent claims are in the format of “product as claimed in one of claims 1-x, characterised in that…” and free of improper multi-dependency.
- The description includes:
- the relevant technical field;
- background art;
- the content of the utility model;
- a description of the figures; and
- the mode of carrying out the utility model portions.
- At least one drawing is attached to the description and the abstract.
As there is no substantive examination, in principle the application proceeds to grant without a prior art search. However, the lack of substantive examination does not mean that every application will be accepted. It is not uncommon for examiners to issue office actions objecting to certain claims that obviously lack novelty. In this case, the applicant may amend the claims to distinguish them from the prior art or submit arguments in support of the novelty of the claims.
In any event, the claim set is preferably drafted in such a manner as to include appropriate dependent claims and thus provide more fall-back positions for possible use in the post-grant proceedings.
If the claims, description and abstract are found not to meet the formality requirements, the examiner will issue a notice of amendments, inviting the applicant to rectify the application.
If no official notice is issued, it usually takes no more than nine months from the filing date to obtain the letters patent for a utility model.
Utility model applications are less expensive than invention applications and proceed more quickly to grant.
Simultaneous filing of invention and utility model applications
Applicants may simultaneously file both invention and utility model applications for the same subject matter. This practice especially accommodates the needs of applicants which are eager to secure a patent for the invented subject matter, but are not sure whether an invention application could survive the substantive examination. By filing both applications, they may at least obtain a utility model patent, even if the invention application is refused.
The practice of simultaneously filing both invention and utility model applications applies to first-filed applications or applications based on the same priority right applications. Therefore, foreign applicants may simultaneously file the invention and utility model applications based on the same foreign priority right application within 12 months of the priority date. The applicant must indicate in the requests that another patent application for identical subject matter is being filed at the same time. If the applicant fails to do so, the two applications will be handled independently and only one patent will be granted.
This practice does not apply to Patent Cooperation Treaty applications, which may be filed only as either an invention application or a utility model application.
Re-examination and judicial review
If the application is rejected by the examiner, the applicant may file a request for re-examination with the Patent Re-examination Board (PRB). Once the request for re-examination has been formally accepted, the PRB transfers the request – together with any evidence and the amended application document attached to the request – to the original examiner who initially rejected the application. If the examiner is convinced by the re-examination request, he or she will inform the PRB and the PRB will revoke the previous rejection decision, reverting the application back to examination by the original examiner.
If the original examiner maintains his or her previous rejection decision, the PRB will take over the case, represented by a collegiate panel of three examiners. In this event, if the PRB finds that the request for re-examination is justified, it will revoke the previous rejection decision and send the application back to the original examiner. On the contrary, if it finds that the request for re-examination is not justified, it will issue at least one re-examination notice inviting the applicant to reply, optionally with amendments to the application or supporting evidence. Depending on its evaluation of the applicant’s reply, the PRB will issue a favourable decision (revoking the previous rejection decision and sending the application back to the examination procedure) or a negative decision (upholding the rejection decision).
If the PRB upholds the rejection decision, the applicant may appeal to the Beijing IP Court, whose ruling may in turn be appealed to the Beijing Higher People’s Court, which makes a final ruling. The applicant may argue, for instance, that certain comments of the PRB on the merits of the claims are not well grounded. During the court proceedings, no amendment to the application may be entered. Alternatively or additionally, the applicant may file a divisional application within the framework of the application, so as to secure a greater opportunity to amend the claims and the description.
Even after the Beijing Higher People’s Court final ruling, the applicant may submit a request for retrial to the Supreme People’s Court. However, it is at the Supreme People’s Court’s discretion as to whether to review the case.
Defending and challenging utility model patents
Procedural matters: After a utility model application has been granted, any party (including the patentee) may request the PRB to declare the utility model patent invalid. The grounds for requesting invalidation of a utility model patent are similar to those applicable to invention patents.
In the invalidation proceedings, the patentee may amend the claims within the framework of the allowed claims, although without the opportunity to amend the claims by extracting features from the description.
The invalidation proceedings usually include an oral hearing at which both parties may present their arguments and evidence.
After the PRB has issued its decision on the invalidation request, either party may appeal to the Beijing IP Court, with the PRB as defendant and the opposing party intervening as a third party. The Beijing IP Court’s ruling may be appealed to the Beijing Higher People’s Court, which issues the final ruling.
Inventiveness: One of the grounds for requesting the PRB to declare a utility model patent invalid is a lack of inventiveness. In this regard, the criteria differ from those applicable to invention patents. Specifically, the inventiveness of a utility model means that, as compared with the prior art, the utility model has “substantive features and represents progress”; whereas the inventiveness of an invention means that the invention has “prominent substantive features and represents a notable progress”. Thus, in handling invalidation requests, the PRB takes the position that the level of inventiveness required for a utility model patent is lower than that for an invention patent. The PRB will verify whether, for a person skilled in the art, there exists a “technical inspiration” drawn from the prior art.
For a utility model, the technical field to be taken into consideration is generally the technical field to which the utility model belongs. However, the prior art may be extended to close or related technical fields if a person skilled in the art could find explicit inspiration or recitation in such fields when looking for the technical solution. In contrast, for invention patents, in addition to the technical field of reference, the technical field to be taken into consideration covers not only close or related technical fields, but also any other technical field in which a person skilled in the relevant art is likely to look for technical means to resolve the technical problem covered by the invention.
Normally, only one or two prior art references may be cited to invalidate a utility model patent. However, for utility models that are simply “pieced together” from the prior art, depending on the circumstances, several references may need to be cited. In contrast, for an invention patent, it is possible to cite more prior art references from a much wider scope of technical fields.
Thus, purely from the perspective of inventiveness, utility model patents may be more stable than invention patents.
Enforcement
In terms of enforceability, the utility model is identical to the invention patent. Thus, if the patentee finds that its utility model has been infringed, it may file a complaint with the local people’s court or a local IP administrative authority seeking a preliminary injunction, a permanent injunction and/or damages. The procedures for seeking remedy are similar to those for invention patents, except that the people’s court or the IP administrative authority may ask the patentee or any interested party to furnish an evaluation report of the patent made by the State Intellectual Property Office (SIPO) and use it as evidence for hearing or handling the patent infringement dispute. Before issuing such a report, SIPO will conduct a search, analysis and evaluation of the relevant utility model. The patentee or the interested party may request such an evaluation report after SIPO has granted a utility model patent.
Even if the patentee or an interested party submits the SIPO-issued evaluation report on the merits of a utility model patent, the opposing party may still submit any relevant references against the claims of the utility model patent in civil proceedings or invalidation proceedings.
Civil court proceedings include two instances (first instance and appeal). After the appeal decision has been rendered, either party may request a retrial by a higher-level court (usually the Supreme People’s Court). It is at the higher court’s discretion as to whether to re-hear the case.
Specialist IP courts are located in Beijing, Shanghai and Guangzhou. Their rulings may be appealed to the higher people’s courts of Beijing, Shanghai and Guangdong Province, respectively. In these IP courts, technical investigators are involved in hearing patent-related disputes to assist the judges in ascertaining technical facts.
Conclusion
A useful IP asset, the utility model patent costs less to acquire and is quicker to obtain than an invention patent. In addition, if challenged on grounds of inventiveness, it is more stable than its invention counterpart. This is a paradox: the patent which is the most difficult to obtain – because it requires a wider inventive step and is granted only after full substantive examination – is easier to invalidate than a simple utility model, which can be granted based on a simple formality examination.
Wanhuida Peksung
Yiyuan Office Building, Friendship Hotel
1 Zhongguancun Street South
Haidian District
Beijing 100873
China
Tel +86 10 6892 1000
Fax +86 10 6894 8030
Web www.wanhuida.com
