According to Article 9 of Patent Law of China, in cases where one and the same applicant applies documents for the registration of an utility model patent and an invention patent on the same date, the utility model patent acquired earlier won’t be terminated, on the contrary, the applicant has a right to declare his waiver of the same, the invention patent may be granted. Hence, this article directly expresses a unique characteristic feature of the Chinese patent application process – the “one case, two requests” system. It’s well-known that the “one case, two requests” system attracts a lot of applicants and it’s used in practice.
The Chinese Government has recently made an announcement about policy amendments to the “one case, two requests” system. It means that when the utility model application filed on the day when it is granted, the invention application will enter a substantive examination stage 4 years later. Furthermore, there is none of official documents proving this amendment, but when a meeting was held in July 2019, the representatives of the CNIPA confirmed this amendment.
Implementing the above-mentioned policy, when the utility model and invention applications are filed on the same day, the CNIPA will mark the invention application in their system as postponing its examination. This policy affects only those applications that where submitted since 2018. In other words, those applications that were submitted before 2018, won’t be affected.
Experts also noted that in those spheres where the examination procedure is quite fast, the impact of this new policy will be minimum. After applying documents for their examination, the invention examination could enter the substantive examination process much earlier if the utility model procedure was on the same day. However, the new policy amendment has a great impact on a heavy examination lagging, where the invention application waiting period is longer. Despite this, experts expect that the new amendment to the system will remain for a long period of time.
It is worthwhile stating that the new amendment to the “one case, two requests” system isn’t applicable to the invention application by means of the prioritized examination. But the latter examination procedure is still available for the utility model application; therefore, it can be submitted for the utility model application.
Having reviewed the new policy amendment of the “one case, two requests” system, applicants should thoroughly examine the amendment before applying documents for the registration of the utility model and invention. Experts give some pieces of advice to applicants. Firstly, when applicants want to get the invention patent granted at the same time as the utility model patent, they should make a decision about the use of the “one case, two requests” system. Secondly, if applicants are sure that there is no rush to obtain it earlier, they can choose the policy with waiting much more time.