Chinese Utility Models, Strengthening and Supplementing Intellectual Property Protection in China
Chinese Utility models can provide an alternative to invention patents and supplement them too. While most jurisdictions do not utilize utility models, they are an essential piece of Chinese intellectual property protection. Unlike invention patents, utility models are not examined. Most people incorrectly assume these “junk” patents are worthless because they are granted without any substantial examination.
However, utility models can be more stable and enforceable than invention patents in certain circumstances when properly used. Often, international entities, especially in North America and Europe, where utility model systems are unavailable, underestimate the additional value added to their portfolio by utility models. The different types of utility applications can be distinguished by their prosecution, invalidation, and enforcement. Understanding these three underlying principles will enable Applicants in China to better understand the best situations for filing both types of applications.
Chinese Utility Model and Patent Prosecution
Unlike invention patent applications, there is no substantial examination of utility models. However, utility models can issue within a year, while invention applications usually require twice. The expedited prosecution process of utility models may allow for quick allowance of broad claims, but there is no indication of validity like other patent claims.
One method to maximize stability in a utility model is to include broad and narrow claims to minimize the effects of the lack of examination. That way, if the broader claims in the utility model are invalidated, the specific claims offer a fallback position that may be more enforceable.
Methods, processes, chemical compositions, and materials are non-patentable with a utility model application. Utility model applications only apply to physical products with technical improvements of the structures are patentable for Chinese utility models. Therefore, to ensure the validity of the utility model application, Applicants should ensure the claims are directed to a product with a clear structure and shape and remove any claims for methods, processes, or chemical compositions or materials.
Invalidation Patents and Utility Models
Utility models require a lower level of inventive step than invention patents, another difference from other utility model programs like Germany. The lower threshold limits the combination of more than three prior art documents to challenge inventive step in a utility model patent. When claims in a utility model are challenged before the Invalidation Board of the CNIPA, they will likely determine that under the reduced threshold, if more than three references are needed, it implies that the claim of the utility model was, to some extent, “non-obvious” per-se.
The lower inventive step threshold enables utility models to protect technologies where the modifications from the prior art are relatively small. Occasionally, an Applicant will only file invention patent applications for minor improvements to the system. These claims often must be significantly narrowed to overcome the prior art. However, had the Applicant filed a utility model applications along with their invention applications, the prior art issues can be minimized.
When Applicants are unsure whether to file a utility model or invention patent application, the best practice is always to consider dual filings. Under Chinese Patent Law, a unique dual filing practice is particularly useful when the applicants are unsure whether their technologies are sufficiently novel and inventive. The dual filing strategy enables applicants to abandon the utility model application of the invention patent to avoid a double patenting issue. Additionally, while applications cannot usually switch from a utility model application to an invention patent application, dual filing enables parallel prosecution, ensuring maximum preservation of the Applicant’s IP rights in China.
If dual filing is unavailable, such as PCT national phase entry into China where only one of a utility model or invention application can be selected, Applicants should consider three factors. Applicants should consider whether they quickly need patent rights, the necessity of ensuring the validity of the claims, the level of the inventive step of the technology, the urgency to assert intellectual property rights in China, and their budget.
Enforcement of Utility Models
If claim language in a utility model is identical to an invention patent, there are only minor procedural differences when enforcing the two types of applications. To enforce a utility model, the patentee must obtain a Patent Evaluation Report (PER) from CINPA. The PER can only be obtained after the grant of the utility model and must be completed before enforcing the utility model. CNIPA will usually take two months to process a PER, where they will assess the patentability of the issued claims in the utility model, similar to a search report. Once the patentee receives a positive or partially positive opinion in the PER, can they begin enforcing the utility model using any legal means such as filing a complaint to the e-commerce platform, initiating administrative enforcement, or filing a patent infringement lawsuit.
Applicants should understand that utility models have shorter patent terms than invention patents. While the patent term for an invention patent is 20 years, utility models are only enforceable for ten years. Accordingly, utility models may be useful in technical fields such as mechanical or electrical devices with high technological turnover. For example, if the Applicant has identifies potential infringement in China before filing any applications, it would be best practice to consider the dual filing approach a utility model filing. Leveraging the shortened prosecution time of a utility model minimizes the amount of time before an Applicant can begin to enforce their IP rights in China.
John DeStefano, is a patent and technology technical advisor at Founders Legal. He received his Bachelor’s Degree in Electrical Engineering from Missouri University of Science and Technology (Rolla) and is pursuing a J.D. at Franklin Pierce School of Law with a focus on intellectual property.