Written by Elliot Zhou

Partner, Patent and Design Attorney, Attorney at Law

 

On April 30, 2025, the CNIPA published a and asked for public opinion. The current version of the Chinese patent examination guideline was the one published in late 2023, which was effective since January 20, 2024.

 

Among all the proposed amendments in the draft patent examination guideline, what sparked intense discussion and debate is the amendment regarding how to deal with double patenting issue for same-day utility model and invention patent. In the past decades, the applicants always have two options in case of double patenting of dual filing cases: they can either abandon the utility model or further amend the invention patent application to make it patentably distinct from the granted utility model. However, the CNIPA wants to further limit the applicant right and leave only the option of “abandonment”.

 

To facilitate your understanding, I listed herewith a comparison of the current version of Guideline and the proposed Guideline in the table below, with changes marked in red.

  

 

As can be seen, for dual filings of utility model and invention patent application where the applicant has declared dual filing, the CNIPA wishes to amend the regulation such that the applicant must choose either utility model or invention patent in case of a double patenting, and can’t make any claim amendment to overcome the double patenting rejection. The CNIPA’s intention is clear: to save examination resources and increase the efficiency of examination, because most of the dual filing cases are identical at the time of filing and is a waste of examiners’ time for repeated work.

 

However, in practice, the invention patent application will undergo a substantive examination, and the claims will be usually revised and narrowed upon receipt of the office actions. As a result, the chance of double patenting is not high, especially considering that the CNIPA is using “identicalness” standard to assess double patenting, rather than “obviousness” standard.

 

Even assuming that a double patenting arises, such may not be a double patenting between claim 1 of the utility model versus claim 1 of the invention application, but more likely a double patenting between a dependent claim (say, claim 10) of the utility model versus claim 1 of the invention application. This is because a majority of the claim amendment during the prosecution of invention patent application is to grab features from dependent claims (e.g., claim 10) into claim 1. Therefore, if this new draft Guideline is passed by the legislature, the patent owner may likely face a dilemma and need to choose between a broader 10-year utility model versus a narrower 20-year invention patent, and this is a bit unfair because both utility model and invention patent are supposed to be fully patentable for novelty, inventive step and industrial applicability.

 

While we don’t think this is a good regulation, we have come up with three practical tips below, in a hope to circumvent the limit of this new regulation. This is important because it is not clear yet whether this new regulation, if announced eventually, will affect only the new applications to be filed or will affect all the dual filing applications including the ones pending. Taking a proactive approach to prevent the risk is highly advisable.

 

Strategy One: The proposed new regulation seems to target traditional dual filings only (i.e., UM + Invention combination) but does not seem to hurt special dual filings (i.e., UM + PCT combination). Therefore, it is advisable for applicants to utilize more of UM + PCT special dual filing strategies for future filings instead of traditional UM + Invention dual filings.

 

The gist of UM + PCT combination is that applicants could file a Chinese utility model application and a PCT international application together (or, both claiming the same priority). While the utility model could be granted in approximately one year from filing, the PCT application could enter the Chinese national phase as an invention patent application by the 30/32-month deadline. The new regulation does not limit the amendment of the Chinese national phase invention patent application, and thus could perfectly circumvent the limits of the new regulation.

 

Strategy Two: The proposed new regulation seems to target traditional dual filings where the applicant has declared dual filings by ticking the box in the petition. Thus, the trick is that if the applicant does not tick the box or declare “dual filings” upon filing, the new regulation may not apply.

 

However, the applicant needs to balance the pros and cons of declaring or not declaring “dual filings”. Namely, if the “dual filing” statement is made, the applicant would have preserved the right to elect utility model or invention patent in case of double patenting, but would have lost the right to revise the claims of the invention application in case of double patenting. On the other hand, if the dual filing statement is not made, the applicant would have the right to further revise the claims of the invention application in case of double patenting, but would have lost the right to abandon the utility model in favor of the invention patent.

 

Strategy Three: The most straightforward approach is to make Claim 1 of utility model patentably distinct from Claim 1 of invention patent application at the time of filing. For example, Claim 1 of utility model could be more focused on the structure of the device – as required by the Chinese patent law, whereas Claim 1 of invention patent application could be more focused on the function of the device, such as means-plus-function features. In this way, the double patenting risk would be substantially reduced from the very beginning, and the new regulation of the draft examination guideline would hardly apply.

  

For your better understanding, I have summarized these practical tips in the table below. Importantly, these tips could be used in combination to further mitigate the risks. For example, Strategy Two and Strategy Three can be used together. Strategy One and Strategy Three can be used together as well, though such may not be necessary. 

 

 

If you have any questions about this topic, or if you would like to hear other practical tips about patent, design or trademark, please feel free to contact me at patent@foundin.cn or trademark@foundin.cn.