people are familiar with Chinese invention patents, not many people know about
Chinese utility models. Utility models are actually an important type of
patents that could serve as a good alternative or supplement to the invention
patents. However, because many jurisdictions have no utility model patent
system, this type of patents have been largely overlooked by many companies and
IP practitioners around the world.
are quite a few differences between invention patents and utility models. The most
prominent one is probably “no substantive examination” for utility models. Largely
due to the lack of examination, many people naturally thought that the
qualities of utility models would be lower than the invention patents, and some
even believe that Chinese utility models are a harbor for “junk patents”.
from our perspective, if utility model patents can be used smartly, they are
powerful weapons that would be even more stable and more enforceable than
the invention patents. The benefits of utility models have been underestimated,
especially underestimated by foreign entities from countries or regions where no
utility model patent system is available (for example, the US, EP, Canada, UK,
just name a few).
this article, we will discuss the pros and cons of Chinese utility models from
three aspects: prosecution, invalidation and enforcement, in a hope that the readers can better understand the
Chinese utility model system and how best to maximize their benefits of practicing
utility models in China.
of Utility Models==
to the lack of substantive examination, the Chinese utility model patents will
be usually issued in more or less 1 year
after filing (which is very fast versus 2-4 years for invention patent). The
lack of examination is good in a sense that the applicant can obtain a quick
granted patent with broad claims, but it is bad in a sense that the stability
of the claim(s) has not been assessed or examined during its prosecution.
to overcome the downside of “no examination” above and to obtain a more stable
claim set, we would strongly suggest the applicant at least add some narrower
claims as a fallback position at the end of the utility model application.
Those narrower claims will be closer to the actual product, and will be less
vulnerable to the invalidation attack.
it is important to note that only physical products with technical improvements
on the structures and/or shapes are patentable for Chinese utility models. Any
methods, processes, or even new materials or new chemicals will be considered
non-patentable for a utility model application. So, when you decide to file a
utility model in China, you must make sure that the claims are protecting a
product with clear structures and shapes, and you must delete all the claims
directed to methods, processes, new materials or new chemicals.
of Utility Models==
important difference is that Chinese utility models require a lower level of
inventive step than that of the invention patents. This is probably an
important difference from utility model practices in other countries like
of this lower threshold for inventive step, if a petitioner tries to use more
than three prior art documents in combination to challenge the inventive step
of a UM claim, the Invalidation Board of the CNIPA may usually take a stand
against the petitioner, because the fact that it needs more than three prior
art documents in combination to challenge a claim would imply, to some extent, the
“non-obviousness” of the claim per se.
thanks to the lower threshold for inventive step, utility models are a good
weapon to protect technologies where the modifications from prior art are relatively
small. We have seen some applicants file only Chinese invention patent
applications but it turned out to be hardly allowable in view of the cited
prior art. If they had filed a utility model at the beginning of the
prosecution, the problem would have been solved.
the applicant is not sure whether a utility model application or an invention
patent application should be filed, then we suggest the applicant consider the
option of dual
filings. The dual filing is a special and unique practice under the
Chinese Patent Law, and is particularly useful when the applicants are not certain
whether their technologies are sufficiently novel and inventive. Particularly,
the dual filing strategy even allows the patentee to abandon the issued utility
model by the time when the corresponding invention patent is granted with a
double patenting issue.
the dual filing partially solves the dilemma in which utility model and
invention patent applications can’t be switched from one to the other during
the Chinese patent prosecution. In other words, the only way to solve the “switch”
problem is to have a dual filings at the very beginning of the Chinese patent
prosecution, such that both utility model and invention patent applications
could be prosecuted in parallel at the CNIPA. This could maximally preserve the
applicant’s IP right in China.
if the dual filing option is not available (say for PCT national phase
entry into China where applicants have to choose either one of utility model or
invention patent application), then it will be better to consider various
factors, such as (1) the necessity of having a quick grant, (2) the necessity
of ensuring the stability of claims, (3) the level of inventive step of the
technology, and (4) the urgency of the patent enforcement in China (i.e.,
whether there is a clue of infringement in China already), or some other
factors like budget and cost, etc.
of Utility Models==
is almost no difference between the enforceability of a utility model and an invention
patent if their claim language is identical. That is why increasing number of companies
are interested in filing Chinese utility models, with a hope that they could use
them against potential infringers in China.
only major differences between utility models and invention patents at the
enforcement stage is the procedure of
enforcement and the patent term.
to officially enforce a utility model, the patentee is usually required to
obtain a Patent
Evaluation Report (PER) from the CNIPA after the grant of the
utility model but before taking an enforcement action. The patent evaluation
report is similar to a search report that intends to assess the patentability
of the issued claims in the utility model. The CNIPA will usually take 2
months to issue the PER, and the result will be positive, negative, or
the patentee receives a positive or partially positive PER, they could
immediately enforce the utility model by any possible legal measures, such as
filing a complaint to the e-commerce platform, initiating an administrative
enforcement, or filing a patent infringement lawsuit, or the like.
patent term of a utility model is 10
years (versus 20 years for an invention patent). Due to the shorter patent
term, some people believe that the utility model is more useful for protecting mechanical
or electrical devices that have a faster technological turnover.
the company already noticed some clues of infringement in China before filing any
patent applications, then it would be more advisable to file utility models, or,
dual filing option as discussed above. The utility model will greatly shorten
the period for which the patentee can obtain a granted patent in China, and
would naturally shorten the period to enforce the utility model.
If you have any questions about this topic or any other topics in patent prosecution or litigation, please feel free to drop an email to Mr. Haoyu ZHOU (Elliot) at firstname.lastname@example.org. We will be happy to provide more detailed advices on a case-by-case basis.