Type of patents
Inventions, utility models and designs are the three categories of patent protection available in China. An applicant may apply for an invention patent to protect an innovative technical solution for an article or process, or for an improvement to an article or process. A utility model patent, on the other hand, protects any useful and new technical solution to the shape or structure, or a combination thereof of an article.
Once a patent application has been filed it enters the preliminary examination stage. Patent applications under preliminary examination undergo a formality check by the State Intellectual Property Office (SIPO). At this stage, an examiner checks whether the application contains any obvious and substantial flaws or defects, including whether the subject of innovation can be deemed patentable subject matter. The examiner will also determine whether the filing formality requirements have been met.
The examination of utility model applications is such that any obvious and substantial flaws with respect to novelty or practical applicability may be grounds for refusal, although no inventiveness requirement is examined.
Once a utility model application has passed the preliminary examination stage with no finding of an obvious or substantial flaw, SIPO issues a grant decision on the application and a letters-patent, and also publishes the grant patent.
Grant of patents
Utility model patent applications can be granted much faster than invention patents as a result of non-substantive examination. Consequently, in recent years, filings of such applications have increased. In response to the relatively high number of low-quality utility models and designs, however, SIPO has applied more stringent preliminary examination standards to utility model applications.
The duration of protection for an invention patent right is 20 years, while it is 10 years for a utility model patent right, both computed from the filing date.
Proceeding for combined invention and utility model applications
In China, given that the threshold for inventive step is relatively low for utility models, a utility model application enjoys the benefit of a simple examination procedure; patent rights are often granted within six to eight months or even sooner.
Under the Patent Law, applicants are permitted to claim both invention and utility model patents for the same invention. This allows an invention to be protected as a utility model patent if it meets the requirements of preliminary examination; once SIPO grants the invention application for the same invention, the rights holder may opt to abandon the utility model patent right and convert it into an invention patent right. By doing so, the rights holder will continue to enjoy exclusive patent rights for the same invention. Even if the invention patent is not granted, the rights holder may retain the utility model patent.
The criteria for this procedure include the following:
- One invention application and one utility model application must be filed;
- The same applicant(s) must file the applications on the same filing date;
- A declaration must accompany each application at the filing stage stating that the application is for two patent rights relating to one invention; and
- The utility model patent must be valid at the time that an invention patent is to be granted, and the applicant must declare its abandonment of the utility model patent within a specific time period before the invention patent is granted.
On publication of the granted invention patent, the utility model patent will cease to exist.
Invalidation and Enforcement
A utility model patent right is enforceable in both administrative and civil proceedings. The right can be invalidated by the Patent Re-examination Board under SIPO (hereinafter “the Board”). Claim construction for a utility model patent right in determination of the patented scope is the same as that for an invention patent.
Since utility model patents do not go through substantive examination, parties who bring a patent infringement lawsuit based on a utility model right may be requested by the court to submit a patent assessment report from SIPO, in order to ascertain validity of the right. On the other hand, whenever the validity of a utility model right is challenged and invalidation against such a right has been filed with the Board, the court tends to stay the civil court proceeding until the Board has made its decision. However, if the utility model patentee can present to the court an assessment report on the merits, the court may continue the proceedings related to such a patent infringement lawsuit.