According to statistics from the Patent Office of the State Intellectual Property Office (SIPO), 526,000 applications for invention patents were received in 2011, which was a 35% year-on-year increase. SIPO also received 585,000 utility model patent applications and 521,000 applications for design patents, representing a 43% and 24% year-on-year increase respectively.
Applications for utility model patents usually have short examination periods and low costs making them very popular with domestic Chinese applicants. Of the utility model patent applications made in 2011, only 4,164 of these were filed by foreign applicants.
In 2011, the Patent Reexamination Board of SIPO received 2,749 patent invalidation cases. However, according to statistics, from the year 1986 to 2007, about half of the total number of requests for patent invalidations in China concerned utility model patents. In recent years, as more well-known international companies undergo infringement lawsuits on utility model patents and face setbacks in invalidating utility models in China, applicants abroad have started to look more at the value of utility model patents in China.
According to the provisions of Article 22.3 of the Chinese Patent Law:
[…] inventiveness means that, as compared with the prior art, the invention has prominent substantive features and represents a notable progress; the inventiveness of the utility model means that, as compared with the prior art, the utility model has substantive features and represents progress.
Therefore, the standard of the inventiveness of the utility model patent is lower than that of the invention patent.
The differences in the standard of inventiveness between patents for invention and utility model patents in the course of invalidation mainly concern two aspects: in the field of prior art references, for an invention patent, the examiner will consider not only the technical field to which the invention belongs, but also the proximate or relevant technical fields and other fields. For a utility model patent, the examiner will normally focus on the technical field to which the utility model belongs and normally one or two prior art references may be cited to assess its inventive step, whereas for an invention patent usually one, two or more prior art references may be cited to assess its inventive step. Where the utility model is made just by juxtaposing some prior art, the examiner may cite more than two prior art references to assess its inventive step according to the circumstances of the case.
Domestic applicants in China, some of whom would like to conduct a preliminary search before drafting the application document for a utility model patent, are concerned more about quality. This shows that, although there is no substantive examination for utility model patents, they are still very difficult to invalidate. In addition to the high speed with which the patent is granted, the patent owner can use it to stop or fight infringement. For this reason, the patent application strategy in China for foreign applicants, in particular, applicants from Japan, the US and Germany, has changed to an extent. In 2011, the total number of utility model patents filed by foreign applicants increased 60.3 % year-on-year.
According to the provisions of Article 2 of the Chinese Patent Law, the term utility model refers to any new technical solution relating to the shape, the structure, or the combination thereof of a product fit for practical use. If only the technical solution relates to the shape, the structure of a product, a system or a circuit for example then it can be filed as a utility model patent.
According to the provisions of Article 9 of the Chinese Patent Law, for any identical invention-creation, only one patent right shall be granted. Where an applicant files applications for both the utility model patent and patent for invention relating to the identical invention-creation on the same day, and the applicant declares that they will abandon the patent for a utility model which has been granted and has not terminated, the patent for invention may be granted.
Few applications for a patent for invention are granted a patent right without substantive amendments during the examination phase. The utility model patent application is different. Since SIPO conducts the preliminary examination system for utility model patents, a patent right can be granted without substantive examination. In the substantive examination phase for the patent application for invention relating to the invention-creation identical to the utility model patent, if the application for the patent for invention can be amended to have different protection scopes from that of the utility model patent and meets the requirements, the patent owner may also hold two patent rights with different protection scopes.
After amending the application for a patent for invention, if the extent of the protection of a claim in that application is still identical to a certain claim in the utility model patent, the applicant can obtain the invention patent by abandoning the utility model patent.
Foreign applicants are often keen on applying for patents for invention due to its stable legal status, long protection periods and the wide popularity of the enterprises, among other advantages. However, as an application for a patent for invention must undergo substantive examination, many are bound to be rejected due to failure to meet the requirements of inventive step. This does not mean that this technology does not have any inventive step: the technology may not show inventiveness of the invention patent, but it may meet the inventiveness of the utility model meaning it could be granted utility model patent protection.
If budgets for those invention-creations considered most important allow, applicants should consider applying for both invention patents and utility model patents simultaneously. For unimportant invention-creations, applying for utility model patents could be advised, while for some less important inventions, applying for patents for invention is recommended so as to optimise the patent portfolio of the enterprise and reinforce cost management.
All patent owners want the protection scope of their patent rights to cover the products of their competitors, while competitors want peripheral designs that avoid patent rights. In the US, applicants are permitted to continuously amend their patent application documents to ensure that their patents cover the products of their competitors to the best of their abilities by submitting for example, continuation, divisional or continuation-in-part applications. Although there are limitations in divisional applications in China, there are some areas that can be exploited.
According to the provisions of the Guidelines for Patent Examination published in China, the applicant is to file a divisional application within two months ¬– the time limit for going through the formalities of registration – of the date of receiving the Notification to Grant Patent Right to the initial application issued by the Patent Office. After that deadline or where the initial application has been rejected, withdrawn or is deemed to have been withdrawn and the right has not been restored, no divisional application is to be filed in general.
Where an applicant files another divisional application based on a divisional application already filed, the submission date of another divisional application will be examined according to the initial application.
If the initial application is not pending and the applicant still hopes to file another divisional application based on a divisional application already filed, the applicant may file this divisional application according to the office action indicating the unity defect or the Notification to Make Divisional Application issued by the examiner for the divisional application already filed. The applicant should make full use of it as there could be the problem of unity when submitting the first divisional application or exploiting the opportunity of the amendment on their own initiative. In doing so, the applicant has the opportunity to file another divisional application and in this situation, the Guidelines for Patent Examination do not set a specific time limit.
Foreign applicants should note in particular that divisional applications still need to meet the requirements of the provisions of Article 33 of the Chinese Patent Law. The contents of the divisional applications must not go beyond the scope of the recordation of the original application documents and the examination of this is very strict. The question of whether the amendments or the contents in the divisional application go beyond the scope of the original application documents is not the same as the question of whether the amendments or the contents in the divisional application are supported by the specification. The applicant must pay attention to the draft of the initial application, the number of the embodiments and the generalisation of the claims so as to lay down the groundwork for the divisional application.
Vivian Huang joined Kingsound & Partners in 2003 and is now a patent attorney and the partner responsible for the patent division. Her practice area covers drafting, prosecution, reexamination, invalidation, litigation and strategy in IP matters in a wide variety of technical fields, particularly electronics, computer, automatic control, mechanical engineering and medical instruments.
Vivian received her BS degree in automatic control and BS degree in business administration in 2000 from Wuhan University of Technology. She began to practice IP law in 2002 and participated in a training programme in a US law firm in 2009 where she studied US patent application and litigation procedures.