The newly revised Examination Guidelines (2023 version) (hereinafter referred to as the “new provisions”) took effect on January 1, 2026. The provisions applicable before January 1, 2026 are hereinafter referred to as the “old provisions”. The new provisions have introduced modifications to the rules concerning “same-day dual filing” applications directed to the identical invention-creation. Under the new provisions, based on the authors' experience, it is no longer possible for the applicant to maintain two valid patents concurrently for such "same-day dual filing" applications. Below is a brief explanation of the examination practice for these "same-day dual filing" applications.
I. Relevant Provisions
1.Article 9(1) of the Patent Law of the People’s Republic of China
Only one patent shall be granted for the identical invention-creation. However, where the same applicant files on the same day both a utility model application and an invention application for the identical invention-creation, and the utility model patent obtained earlier has not been terminated and the applicant declares abandonment of the utility model patent, an invention patent may be granted.
2. Newly revised contents in the last paragraph of Section 6.2.2, Chapter 3, Part II of the latest Patent Examination Guidelines 2023
For cases where the same applicant files on the same day (referring only to the filing date) both a utility model application and an invention application for the identical invention-creation, in accordance with Rule 47 of the Implementing Regulations of the Patent Law of the People’s Republic of China, the applicant shall make a statement in each application at the time of filing that another application has been filed for the identical invention-creation. If no such statement is made, the applications shall be handled in accordance with the provision in Article 9(1) of the Patent Law of the People’s Republic of China that only one patent may be granted for the identical invention-creation. If such a statement has been made, and after examination, no grounds for rejection are found in the invention application, the applicant shall be notified to declare abandonment of the utility model patent within a specified time limit.
II. Explanation of the "Principle of Prohibition on Double Patenting"
1.Meaning of the "Principle of Prohibition on Double Patenting"
According to Article 9(1) of the Patent Law of the People’s Republic of China, the "Principle of Prohibition on Double Patenting" provides that only one patent may be granted for the identical invention-creation, in other words, the identical invention-creation cannot be granted two patents/times.
2.Exceptions to the "Principle of Prohibition on Double Patenting" under the New Provisions
According to Article 9(1) of the Patent Law of the People’s Republic of China, and Rules 47(2) and 47(4) of the Implementing Regulations of the Patent Law of the People’s Republic of China, to qualify for the exception to the "Principle of Prohibition on Double Patenting", all the following eight conditions must be met simultaneously:
(1) same applicant;
(2) same filing date;
(3) identical invention-creation;
(4) both a utility model application and an invention application are filed;
(5) the utility model patent obtained earlier has not been terminated;
(6) the applicant declares abandonment of the utility model patent;
(7) a statement indicating that another application has been filed for the identical invention-creation is made at the time of filing; and
(8) after examination, no grounds for rejection are found in the invention application.
Among these, conditions (1)-(6) are stipulated in Article 9(1) of the Patent Law of the People’s Republic of China, condition (7) reflects the obligation to state "same-day dual filing" as stipulated in Rule 47(2) of the Implementing Regulations of the Patent Law of the People’s Republic of China, and condition (8) indicates the abandonment procedure stipulated in Rule 47(4) of the Implementing Regulations of the Patent Law of the People’s Republic of China.
III. Discussion on Examination Practice of "Same-Day Dual Filing" Applications under the New Provisions
According to official information from the China National Intellectual Property Administration (CNIPA), under the new provisions, the examination practice of "same-day dual filing" applications for the identical invention-creation is divided into two scenarios based on whether a “same-day dual filing” statement has been made:
1.Where a statement has been made: When the invention application is ready to be granted, regardless of whether the invention application has been amended during examination (i.e., regardless of whether the scope of protection of the invention differs from that of the utility model patent), if the utility model patent has not been terminated, the applicant has to select no more than one of the two. That is, the applicant has to either abandon the invention application and continue to maintain the utility model patent, or abandon the utility model patent and obtain the invention patent. Unlike under the old regulations, the applicant can no longer obtain two patents simultaneously by amending the invention application to have a scope of protection different from that of the utility model patent.
2.Where no statement has been made: In this situation, because the applicant has failed to fulfill the statement obligation, the consequences are more severe. As condition (7) above is not satisfied, the applicant cannot enjoy the benefit of the exception to the "Principle of Prohibition on Double Patenting". Therefore, based on Article 9(1) of the Patent Law of the People’s Republic of China, the applicant does not even have an option to abandon the utility model patent in favor of the grant of the invention application. The invention application will be directly rejected.
Briefly, the general process is as follows:
In practice, as of now, according to our statistics from a number of cases, where a “same-day dual filing” statement has been made, and at the time the invention application is ready to be granted, if its scope of protection is different from that of the utility model patent, examiners have in all these cases required a "choose one of the two" decision. That is to say, to obtain the invention patent, the applicant must abandon the utility model patent first. In other words, the invention patent can only be obtained “upon surrender of” the utility model patent, and cannot coexist with it.
It should be noted that although the above discussion presents the examination practice based on official information from the CNIPA, there are different opinions in IP field. Some believe that regardless of whether a "same-day dual filing" statement has been made, if the scope of protection of the invention application at the time it is ready to be granted is different from that of the utility model patent, the various examination departments of the CNIPA may exercise reasonable discretion based on the specific circumstances of the cases. However, the authors have not yet obtained any evidence to support this view, that is to say, the authors have not encountered any case where two patents can be maintained simultaneously for 'same-day dual filing' applications. In the future, the authors will continue to closely monitor whether such reasonable discretion actually exists in practice, and if so, whether two patents can co-exist for "same-day dual filing" applications, and will promptly provide the updated information for applicants' reference as new developments arise.
IV. Conclusion
The new provisions have substantially altered the examination practice for "same-day dual filing" applications compared to the old regulations. Therefore, applicants need to fully consider the pros and cons before filing and adopt the most suitable filing strategy.
