Author: Haoyu (Elliot) ZHOU

On November 13, 2025, the China National Intellectual Property Administration (CNIPA) issued a decision to amend the Patent Examination Guideline, and the new Guideline is announced to take effect on January 1, 2026. Among the numerous changes, the revisions to “dual filing” examination (i.e., filing both a utility model and an invention patent on the same day) have sparked extensive discussion within the industry. This article analyzes the current and revised regulations on dual filings, and provides some practical tips on how to maximize applicants’ interest following the new Guideline.

Why Applicants Prefer Dual Filings in China

It is well known that under Chinese patent practice many applicants prefer “dual filing” strategies. This approach has remained as a popular patent filing strategy in China for several reasons:

(1) Under the current Chinese Patent Law, utility models will undergo only preliminary examination, whereas invention patents will undergo substantive examination; this would make utility models easier to be deemed allowable than the invention patent. Moreover, the Chinese Patent Law imposes lower inventiveness requirements for utility models and higher ones for invention patents; this makes it possible for technical solutions that fail to meet the inventiveness threshold for invention patents to still secure utility model protection. Thus, dual filings offer a double insurance and potentially minimize the risk of non-grant for invention patent applications.

(2) Patent owners usually prefer a larger portfolio of patents, which may be indicative of their overall innovation capabilities. Under this consideration, many applicants opt for dual filings to not only increase their patent portfolio but also maximize potential benefits—if both utility model and invention patent are granted with different scope, they could provide dual protection in enforcement and commercialization.

(3) In dual filing cases, since utility model and invention patent are substantially identical at the time of filing, dual filing strategy would not significantly increase the costs associated with drafting and formality check before filing. Therefore, from a cost-benefit perspective, dual filings represent a more economical and efficient choice for applicants.

(4) Unlike patent systems in countries such as Germany, Chinese patent law does not allow the conversion of a pending invention patent into a utility model via a divisional application. A divisional of an invention patent application must remain an invention, and a divisional of a utility model must remain a utility model. This means that dual filings are probably the only viable option for applicants to concurrently keep both invention patent and utility model in China—claiming domestic priority is another option that allows for conversion of patent types in China, but the drawback is that earlier patent application will be deemed withdrawn and only the latter patent application can be kept alive.

Of course, dual filings are not limited to the conventional approach of submitting “invention + utility model” on the same day. Some applicants prefer to use “utility model + PCT application” approach. While utility model may be granted quickly in one year, the PCT application can enter the Chinese national phase later by the 30 months (or up to 32 months) from the priority date as an invention patent application, ultimately achieving the “utility model + invention patent” dual filing outcome. This approach is more preferably used by multinational corporations and international applicants because it provides applicants more time to consider whether or not to pursue a PCT-China invention patent in light of the granted utility model.

Examination of Dual Filings under Current Law versus New Law

Under the current legal framework, most applicants choose to submit a declaration to CNIPA for dual filings. The benefit of such declaration is that, under the current law, if the invention patent application is found to have a double patenting issue with the already granted utility model and if the declaration has been made, the applicant can traverse double patenting by either amending the claims of invention patent application, or abandoning the granted utility model. The declaration provides applicants with flexibility in deciding how to proceed with both invention patent and utility model, making it the “optimal strategy” under the current law.

Conversely, if applicants do not submit a dual filing declaration to CNIPA, the double patenting issue, if raised, can only be addressed by further amending the claims of invention patent application, and abandoning the granted utility model wouldn’t work. Even if applicant voluntarily abandon the granted utility model before double patenting issue is raised, such could not overcome the double patenting issue. This has been confirmed in several judgments issued by the Beijing Intellectual Property Court, such as Case No. (2016) Jing 73 Xing Chu 4308 and Case No. (2018) Jing 73 Xing Chu 3561.

However, the new Guideline appears to shift away from this traditional approach, and no longer offer the same convenience for declared dual filings. Specifically, the revised Guideline on dual filings is provided below. Additions are underlined, and deletions are shown with a strikethrough:

Part II, Chapter III, Section 6.2.2

......

Where the same applicant files both a utility model and an invention patent for the same invention on the same filing day, pursuant to Article 47 of the Implementing Regulations of the Patent Law, the applicant shall state at the time of filing that another patent application has been filed for the same invention. If no such statement is made, the matter shall be handled in accordance with Article 9(1) of the Patent Law, which requires that only one patent right can be granted for the same invention. If a statement is made and no grounds for rejection are found following the examination of the invention patent, the applicant shall be notified to declare abandonment of the utility model patent within a specified time limit. If the applicant declares abandonment, a decision to grant the invention patent shall be made, and the applicant’s declaration abandoning the utility model patent shall be announced simultaneously with the grant of the invention patent. If the applicant refuses to abandon the utility model, the invention patent application shall be rejected. If the applicant fails to respond within the time limit, the invention patent application shall be deemed withdrawn. If the utility model patent obtained earlier has not terminated and the applicant made the respective statement at the time of filing, double patenting may be avoided by abandoning the utility model patent, in addition to amending the invention application. Therefore, during the examination of such invention applications, if the application meets all other conditions for grant, the applicant shall be notified to make a choice or amend the application.

Put simply, while the examination for undeclared dual filings probably remains the same as the current legal practice, the examination for declared dual filings is to be substantively changed after January 1, 2026. Specifically, for declared dual filings, the new Guideline appears to restrict applicants’ right to address double patenting issue by further amending the invention application, and leaving the abandonment of either the granted utility model or the invention application as the only option to obtain a patent grant.

Two interpretations for this revision currently exist for declared dual filings:

(1) First Interpretation: If dual filing is declared and the invention application is considered allowable, then regardless of whether a double patenting issue exists between the invention application and the granted utility model eventually, applicants must abandon the granted utility model to be in favor of the invention patent or abandon the invention application to be in favor of the granted utility model.

(2) Second Interpretation: If dual filing is declared and the invention application is considered allowable, applicant needs to choose between the invention patent and the utility model only if there is a double patenting issue.

Under this interpretation, if the invention application has already been amended during the examination to address the double patenting issue, then neither of the patents needs to be abandoned.

Although it is not clear how CNIPA interprets the revision, I tend to believe the second interpretation is probably more appropriate. This is because the first interpretation, which would require the applicant to abandon one patent merely because a dual filing declaration was made, ignoring the possibility that the examined invention may differ from the granted utility model, seems overly aggressive and arbitrary. The second interpretation, which would still follow the double patenting standard, is a more universally recognized ground for rejection in the IP industry.

Regardless of which interpretation reflects CNIPA’s intent, a crucial point is that, the applicants’ right to amend claims in declared dual filings will be significantly reduced compared to the current practice. Namely, if applicant declares dual filings, the possibility of obtaining patent grants in both of invention application and utility model will be much lower after January 1, 2026.

More disadvantageously, in practice, the amended claim 1 of the invention patent following the examination is often not identical to the utility model’s claim 1 but is more likely to overlap with a dependent claim of the utility model. Under the new Guideline, for example, if the examiner finds a double patenting issue between the invention’s claim 1 and the utility model’s claim 10, and no other grounds for rejection exist, the examiner may no longer allow the applicant to further amend the invention application, but instead require the applicant to choose between the two patents. This means the applicant must either abandon a utility model with broader claims but only a 10-year patent term, or abandon an invention patent with a longer term (20 years) but narrower claims—either choice is unfavorable to the applicant.

In contrast, for undeclared dual filings, the revised Guidelines explicitly state that examination will follow the double patenting standard (Article 9(1))—meaning that applicants are permitted to overcome double patenting by amending the claims, consistent with the current law and with no significant adverse consequences. Moreover, given that CNIPA’s double patenting examination standard tends to focus on “identicalness of claims”—similar to the statutory double patenting standard in the U.S. patent law—double patenting issues in China can often be addressed by amending claims to include some non-essential features, which is more advantageous than abandoning the utility model.

In summary, in view of the big change in the upcoming Patent Examination Guideline, we would encourage applicants to shift away from the conventional declared dual filing strategy to undeclared dual filing strategy, to better safeguard the amendment rights. The undeclared dual filing strategy would allow applicants to overcome double patenting by amending the claims of invention application and potentially obtaining both patents. Conversely, continuing with declared dual filing strategy may subsequently fall into an undesirable “either-or” trap without the option to amend.

Finally, we believe this revision only targets declared dual filings and will not affect other special dual filing strategies—such as “utility model + PCT” dual filings. The reason is that “utility model + PCT” filings have never required any declaration to CNIPA even under the current law, and thus remain unaffected by this revision. The “utility model + PCT” approach may serve as an alternative undeclared dual filing strategy, and could mitigate the impact of the revised Guideline.

Application of Law and Other Potential Issues

Up to date, we only know that the new Guideline will take effect on January 1, 2026. But, the CNIPA has not yet issued any transitional measures to clarify the scope of application of the revised Guidelines, which may create some uncertainties in the short term.

For instance, a major uncertainty is whether dual filing cases that were declared before January 1, 2026 but still pending will be examined under the new Guidelines or the current Guideline. If the pending declared dual filing cases are to be examined under the new Guideline, applicants may need to proactively amend their invention applications or utility model application now to avoid the “either-or” risk under the new Guidelines. It is hoped that CNIPA will soon issue transitional measures and provide guidance and predictability for applicants and the public to take appropriate measures.

Secondly, the revision states: “...If the applicant refuses to abandon the utility model, the invention patent application shall be rejected.” The question would be, can the applicant, following the rejection of the invention application, file a request for re-examination and further amend the claims during re-examination to overcome the double patenting issue? If amendments are allowed during the re-examination, the re-examination could become a temporary workaround for applicants to circumvent the unfavorable aspects of the new Guideline. Conversely, if CNIPA do not allow applicants to request re-examination or to further amend claims during re-examination, it would suggest that the revision overrides the existing re-examination provisions, creating a contradiction among different chapters of the Patent Examination Guideline. This issue remains to be clarified by CNIPA, and we will continue to observe what will happen after January 1, 2026.

Should you have any questions regarding this topic, or any interest in other patent practices in China, please feel free to reach out to patent@foundin.cn and trademark@foundin.cn.