China’s patent system provides three types of patent rights: invention, utility model and design. The utility model is used extensively by Chinese applicants but foreign applicants have filed only a small number of applications.
According to statistics from State Intellectual Property Office (SIPO), in 2008, Chinese applicants filed 223,945 (99.3%) utility model applications while foreign applicants only filed 1,641 (0.7%). The accumulative numbers from April 1985 to January 2009 are 1,704,871 (99.7%) and 12,389 (0.3%). A possible explanation is that foreign applicants, particularly those from countries where no utility model system exists, may not be familiar with it. Another reason is that the utility model system seems to have been undervalued or even discredited.
However, questions surrounding the value of utility model patents and how to strategically use China’s utility model system are still of great interest to many foreign applicants. But before detailed discussion of this, a review of China’s utility model system is necessary.
China’s utility model system
According to Chinese patent law, “utility model” means any new technical solution relating to the shape, the structure, or their combination, of a product, which is fit for practical use. In other words, utility model
The overall prosecution time for a utility model application is usually much shorter than for an invention application. A utility model patent can be granted between six and 12 months from the filing date whereas
Where the claim scope of a utility model and a patent for invention is identical, they are regarded as double patenting and are not allowed to co-exist.
If a same applicant files a utility model application and an invention application for the same subject matter on the same day, the utility model is usually granted first and the new Chinese patent law, which will come into effect on October 1 2009, prescribes that, in case
This could extend the period during which an enforceable patent right is available and is beneficial to applicants. In addition, since the cost of prosecuting and maintaining a utility model is typically far less expensive
Changing the type of application
Upon filing an application, either the utility model or invention patent must be chosen. It is not possible to change from one type to the other later during prosecution.
Although substantive examination is not conducted during examination, there is a patentability standard for the utility model which is applied during invalidation
According to Chinese patent law, after a patent is granted an invalidation request may be filed by any party. During invalidation proceedings, substantive examination
According to an official from SIPO, in the past approximately 30% of patents for invention were declared completely invalid compared with 35% of patents for utility model – a small difference. In fact, many utility models filed by Chinese applicants are not
Since utility models are not substantively examined, according to the new Chinese patent law, when a patentee wants to enforce a utility model against an alleged infringer, the infringement courts or administrative
According to Chinese practice, the alleged infringer could attack the validity of the utility model at the Patent Reexamination Board. The infringement court
The new Chinese patent law also prescribes how damages should be calculated, which applies to all three types of patents. In other words, the way this is done for a valid utility model is no different
Chinese applicants have filed a great number of utility models applications. This is partly because they are cheap and fast but also because more than half of the utility model applications from Chinese applicants are filed by individual inventors, as opposed to companies. That often means the level of invention is not as high. The lack of substantive examination and thus uncertainty of validity have not seemed to impede Chinese applicants from filing. What is more, some applicants have taken products available overseas and filed utility model patents in China with the intention of later using the utility model right against other parties in China. This article does not intend to judge the
First of all, foreign applicants, especially individual inventors, could also enjoy the fast and cheap prosecution available in China which offers an enforceable right in a quick and cost-efficient way.
Secondly, more sophisticated foreign applicants may also want to consider filing utility model applications for patentability reasons. Foreign applicants usually file Chinese applications claiming priority from foreign
By then, in almost all cases, the applicants have an idea of the patentability of their inventions. This could also be true even if the applicant uses the Paris Convention since in some countries office actions could be available within one year. Hence, for those applications that may have difficulty in terms of inventiveness, the applicant could strategically choose to file utility model applications in China. More than likely, for the “less inventive” inventions, applicants could get a utility model patent, which is difficult to be invalidated for lack of inventiveness.
Thirdly, applicants could strategically choose to file both invention applications and utility model applications. As mentioned above, the applicant could enjoy an extended period of time during which an enforceable right is available. Furthermore, applicants are likely to obtain different sets of claims in utility model patents and invention patents, with the scope of claims in the utility model patents being broader than that of the invention.
Assuming there is no problem with respect to novelty, even if the invention application encounters objections regarding inventiveness during prosecution thereof, the utility model may still stand attack of validity thereof in invalidation proceedings since the standard of evaluating inventiveness is different from that for invention patents. Also, if the utility model patent and the invention patent have different scope of protection, they are not regarded as double patenting. Hence, applicants may take an even further step by filing both invention applications and utility model applications with broader claims in the utility model application.
Moreover, the utility model is a quick and cost-efficient way to protect products with a short life cycle. New generations of products are launched more frequently these days meaning many products do have a shorter life cycle. Invention patents may not be suitable for protecting these products since they take a couple of
Lastly, the utility model is also suitable for “urgent protection”. Where a product is to be launched in China or abroad quickly and where there is no time for sophisticated drafting, a utility model application can be filed with possibly narrow scope of claims which in extreme cases may only cover the actual product.
In this sense, it is similar to US provisional applications. However, US provisional applications do not
For a long time, it has been a default practice to file invention applications and go through substantive examination. Utility models have been overlooked. However, there are merits in the Chinese utility model system if it is used strategically. The Chinese utility model system should be understood and exploited by either foreign individual inventors or sophisticated enterprises.