Chinese utility model and design patent applications do not require substantive examination before they are granted, leading to concerns of low quality patents of copycat technologies and designs. However, the proposed changes would give examiners the power to reject obviously improper applications.
According to an English translation prepared by Taylor Wessing, the proposed revision instructs the examiner to judge whether a utility model application is obviously not novel. The examiner may also conduct a search or otherwise gather documents to determine whether the application lacks novelty.
Similarly, the draft revision gives examiners the authority to reject design patent applications that do not meet the requirements of the Patent Law, particularly if it is obviously a copy of a prior design or there are other applications with substantially identical content. The examiner may also conduct a search to make this determination.
These changes are designed to address the concern that China’s gaudy patent filing numbers are buoyed by low quality patents not based on true innovations. Dan Prud’homme of the EU Chamber of Commerce in China published a report last August noting this issue, and argued that the abundance of low quality patents actually becomes an obstacle for foreign companies who may otherwise want to bring their business and technologies to China.
Catherine Zheng of Deacons in Hong Kong says that while these are relatively small changes, she thinks that they will help cut down on obviously improper patents. She notes that this may have the biggest in design patent applications involving consumer goods, where the examiners may be more likely to notice that an application is based on obvious prior art.
Zheng also points out that that these changes would not solve all the problems presented by low quality patents. She cites as an example a recent matter involving her client, a company manufacturing building materials in China for overseas markets. A Chinese company disassembled the client’s product, took out a design patent on a single internal piece of it, and initiated an infringement suit against the company. The proposed revision would not have had an effect on this case.
The draft changes to the examination guidelines signal a growing emphasis on patent quality. China’s national IP strategy has touted the country’s ambitions to move from a manufacturing-based economy to a high value innovation-based one, but critics have argued that patent quality has not kept pace with the increased numbers.
Zheng also sees other efforts to increase patent quality. She said that she recently attended one of a series of seminars hosted by the China Behaviour Law Association Training Cooperative Center about patent drafting in the technology industry. In one seminar, a SIPO official from the Preliminary Examination and Flow Management Department explained to the audience that because some of the core technologies in many industries have already been patented, often by international companies, Chinese firms need to develop “peripheral” technologies and draft patents that do not infringe upon existing intellectual property. By developing these technologies that co-exist with existing patents, not only will Chinese companies create their own innovations, but it will also present them with licensing opportunities.
