Author: Haoyu (Elliot) ZHOU and Jiangxia DONG

The revised Chinese Patent Examination Guideline has come into effect on January 1, 2026. Among the various updates introduced by the CNIPA, one change has sparked extensive discussion within the patent community: the change of examination rules concerning “same-day dual filings” of both an invention patent application and a utility model application covering related subject matter.

In the past few months, the CNIPA has begun issuing Office Actions against invention applications where a parallel utility model was filed and granted. Based on our review of these Office Actions and discussions with examiners, the CNIPA’s current position can be summarized as follows:

1.  For cases where “dual filing” is declared:

The CNIPA will, at some point during the examination of the invention application, notify the applicant to make a choice: either submit a declaration abandoning the granted utility model, or face rejection of the invention application.

Even if the claims in the invention application and utility model are patentably distinct – meaning no double patenting issue exists – the applicant is still compelled to retain only one of the two rights. The applicant is not allowed to keep both of utility model patent and invention patent simultaneously in force.

2.  For cases where “dual filing” is not   declared:

During the examination of the invention patent application, if CNIPA discovers that the invention application is double patented under Article 9(1) of the Patent Law with a granted utility model filed on the same day by the same applicant, the invention application will be rejected.

Contrary to earlier predictions by some patent agencies, the CNIPA now treats this scenario as essentially a dual filing but without the required declaration. As a result, the applicant is neither permitted to abandon the utility model nor permitted to amend the claims of the invention application to resolve the double patenting issue – the invention application must be abandoned in light of the granted utility model.

Apparently, the CNIPA is taking a highly strict position on dual filings cases. This is probably because the CNIPA made a long-term plan to enhance the patent quality and examination efficiency. From the CNIPA’s perspective, same-day dual filings often result in the same invention being examined twice. Accordingly, the updated Guideline aims to tighten scrutiny of such filings.

==Our Recommendations==

In our view, while the CNIPA’s current stance on same-day dual filings is notably strict, this rigidity may inadvertently penalize cases that should not be targeted.

Firstly, a significant number of same-day dual filing cases were filed before January 1, 2026 – the effective date of the updated Guideline. At the time of filing, applicants could not have anticipated such a stringent shift in CNIPA’s approach. Applying the new rules retroactively would undermine the principle of non-retroactivity and create unfairness for applicants who relied on prior dual filing strategies.

Although the CNIPA issued an <Interpretation on Certain Patent Prosecution Procedures in Conjunction with the Implementation of the Patent Examination Guideline> on December 26, 2025 requiring that pending invention applications as of January 1, 2026 should follow the new Guideline, we believe this Interpretation itself may conflict with the non-retroactivity principle and could be challenged through administrative litigation.

Second, from a legislative perspective, whether an invention patent and a utility model constitute “same-day dual filings” should be determined based on the technical solutions defined by their claims. In practice, some applicants file a utility model to protect a device or apparatus, and a parallel invention patent to protect a related method. In such cases, even if a “dual filing” is declared, the claim scopes are substantively different. It would be unfair for the CNIPA to nonetheless require the applicant to surrender one of the rights.

It is also common that only part of the claims in an invention application overlap with those in a granted utility model (for example, only device claims overlap), while other claims cover different technical solutions (for example, method claims). If the CNIPA treats the entire invention application as the “same invention” merely because a dual filing was declared and then forces the applicant to abandon one of the rights, this approach would be unduly harsh.

==Potential Solutions==

Given the CNIPA’s currently strict approach, applicants seeking to retain both of a utility model and an invention patent in force under the dual filing strategy may consider the following options:

Option 1: Administrative Lawsuit Based on Non-Retroactivity

For dual filing cases with a filing date prior to January 1, 2026, applicants could file an administrative lawsuit with the Beijing Intellectual Property Court, arguing a violation of the non-retroactivity principle. Procedurally, this requires firstly filing a request for re-examination to the Patent Re-examination Board (PRB) upon receiving a rejection decision from the CNIPA. If the PRB upholds the rejection, the applicant may then bring the case to the court. This strategy not only challenges the CNIPA’s abrupt shift of policy, but also delays the effective date of required abandonment of either utility model or invention application, potentially extending the utility model’s patent term.

Option 2: Filing a Divisional Application

Even if CNIPA asks applicant to abandon the invention application or the utility model in light of the dual filings, the applicant would still have the right to file a divisional application stemming from the parent invention application. Thus, another potential option is to file a divisional invention application directed to a set of claims that are patentably distinct from those of the granted utility model. In theory, the divisional invention application and the granted utility model would at most be considered an “non-declared same-day dual filings”. If the applicant ensures that no claims in the divisional invention application are identical or substantially identical to the claims of granted utility model, the CNIPA would have no basis under Article 9(1) to require abandonment of either right. This could allow both the utility model and the divisional invention patent to remain in force.

From our perspective, pursuing both Option1 and Option2 in parallel, rather than choosing one, is the more prudent approach in the short term. During this period of uncertainty, running dual tracks can help minimize risks and maximize potential benefits for the applicant.

==How Foundin Can Help==

If you have recently received an Office Action or a Rejection Decision from the CNIPA requiring you to abandon either a granted utility model or an invention application, Foundin’s attorneys are ready to assist. We can help implement the strategies outlined above – filing administrative litigation and divisional applications at the appropriate junctures – to help preserve both of your patent rights.

Should you have any questions or encounter similar challenges, please feel free to contact us at patent@foundin.cn for further discussion.