As may be known to many IP practitioners, there are three types of patents in China: invention patent, utility model patent and design patent. For protection of intellectual property related to a product, there are different varieties and combinations available in China. We will discuss filing strategy for direct filing in China in this article (not for PCT national stage filing).
Inventions, according to Article 2 of Patent Law of P. R. China, refer to “new technical solutions proposed for a product, a process or the improvement thereof” while utility models refer to “new technical solutions proposed for the shape and structure of a product, or the combination thereof, which are fit for practical use.” The similarities between invention patent and utility model lie in that, 1. both types of patents protect technical solution rather than ornamental design of the product; 2. novelty requirement is the same for both types of patents: global novelty; according to Article 22 of Patent Law of P. R. China, it is required that “the invention or utility model concerned is not an existing technology; no patent application is filed by any unit or individual for any identical invention or utility model with the patent administration department under the State Council before the date of application for patent right, and no identical invention or utility model is recorded in the patent application documents or the patent documentations which are published or announced after the date of application.”
The features of invention patent as compared to utility model patent are: 1. the term of invention is 20 years, which is twice longer than utility model patent with 10 year’s terms; 2. the invention patent will be examined before granted while utility model patent only undergoes preliminary examination; it results in that, a) invention patent can be used to enforced against infringer after granted while for utility models, in many cases, the Patent Evaluation Report (a search report issued by State Intellectual Property Office upon petition by the patentee) is required (e.g. in the online market enforcement, in the administrative enforcement etc.) before enforcing against infringers. b) there are less uncertainties for invention patent in litigation due to the fact of it being examined before granted; 3. the invention patent protects products with shape and structure, composition of matters, liquid, gas and process while utility model patent protects product with shape and structure ONLY; 4. Invention patent is deemed as having higher value than utility model patent; therefore, in the patent infringement litigation, damages awarded to invention patentee are generally higher than utility model patentee if other conditions are the same.
In comparison, utility model patent has the following features: 1. the prosecution period of utility model patent is 4-8 months, which is significantly shorter than the prosecution period of invention patent which usually last for 2.5 to 4 years; thus, the utility model patent can be used to enforce against infringer in 4-8 months after granting; 2. While novelty requirement of these two types of patent is the same, requirement of inventive level of invention patent is higher than utility model patent; according to Article 22 of Patent Law of P. R. China, it is required that the invention possesses “prominent substantive features and indicates remarkable advancements”, and the utility model possesses “substantive features and indicates advancements”. It turns out that it is harder to invalidate a utility model than an invention patent. Thus, in certain circumstances, utility model patent is an ideal way of protection for technological improvement of products with relatively shorter life cycle. What’s more, utility model patent proves to be an effective weapon if the purpose of the litigation is obtaining injunction from the court. In Midea v. Aux case(the link of the case study is here), although the damages awarded by the court is CNY 100,000 (USD 14,000), Midea, which is one of the biggest air conditioner manufacturers in China, succeeded in withdrawing all the infringing product of AUX in the online marketplace with the injunction from the court, resulting in an increase in sales for Midea of roughly CNY 180 million (roughly USD 30,000,000) relative to the previous summer.
Is there any way the applicant can enjoy the advantages of invention patent and utility model patent?
In China, unlike in many other countries such as Germany, utility model patent is a type of patent and thus it can become a conflicting patent for invention patent if it is claiming the same subject matter. According to Article 9 of Patent Law of P. R. China, “only one patent can be granted for the same invention”. Therefore, in China, at any moment, only one patent, either utility model or invention patent for the same subject matter claiming the same scope of protection may exist.
However, there is a particular article in Patent Law of P. R. China that provides the possibility of having the advantages of both types of patents.
Article 9, where the same applicant applies for a utility model patent and an invention patent with regard to the same invention on the same day, if the utility model patent acquired earlier is not terminated yet and the applicant declares his waiver of the same, the invention patent may be granted.
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Therefore, for filing directly in China, the applicant may choose to file an invention patent application, a utility model patent application or parallel applications of invention patent and utility model patent. For the third alternative above, that is, parallel filing of invention patent and utility model patent application, the applicant can have the advantages of both invention patent and utility model patent.
For filing of the applications, the applicant may simply use the same description, drawings and abstract in the filing document. For the claims, applicant may choose to include the set of claims for the patentable subject matter of utility models (product with shape and structure) in the utility model application. If invention patent application prosecutes smoothly, the applicant can enforce the utility model against infringer soon after filing (4-8 months) during the prosecution of the invention patent. The applicant may choose to claim abandon of the utility model patent upon the invitation from examiner to complete the granting process of the parallel invention patent. Eventually, the applicant will have an invention patent. If, on the other hand, the applicant fails to overcome the defects in examination and the application is rejected, the applicant will still have the utility model patent. If the claims in the invention application are amended, so as to claim different scope of protection than the granted utility model patent, both patents may exist with each other.
Please be noted that the strategy mentioned above only apply to direct filing only. For PCT national stage filing, applicant may only choose between invention patent application or utility model patent application. Parallel filing of invention patent and utility model patent application is not available through PCT route.