UTILITY MODEL PRACTICE IN CHINA
INVENTION, utility model and design are the three types of patent rights available in China. Invention patent is equivalent to the utility patent in the U.S. Utility model finds its root in European, in particular,
German practice. The utility model has been used
extensively by Chinese applicants whereas foreign
applicants do not seem to favor it at all.
Stephen Yang,
Partner, at
Peksung
Intellectual
Property in Beijing
one drawing showing the shape or
structure of the product. Otherwise,
the application will not even get a
filing receipt. During prosecution, it
is usually not allowed to make
changes to the drawings. Features
related to methods are not allowed
in claims, even if the subject of the
claims is a product. An electrical
circuit can be protected by utility
model. However, claims can only
include fixed connection relationship
between the components. Features
like algorithm or logic are not
allowed.
Even though Chinese utility model practice has lots
of limitations, it does allow an exception to double
patenting which may interest many applicants. In
particular, Chinese patent law allows an applicant to file
a utility model application and an invention application
for the same subject matter on the same day. The utility
model is usually granted first and when the invention
application is ready to be allowed and the utility model
is still valid at that time, the applicant is allowed to
abandon the utility model and choose the invention
patent. The utility model is then abandoned on the issue
day of the invention patent.
This effectively extends the period during which an
enforceable patent right is available. As the cost of
prosecuting and maintaining a utility model is far less
than that for an invention, filing two applications will
not significantly increase the cost to the applicant. For a
foreign applicant, since the text of the applications are
the same, translation cost will basically be the same as
filing only one application.
However, the following points need to be noted by
foreign applicants to take advantage of this rule. First of
all, the “same day” herein refers to the same day on
which two applications are actually filed in China.
Hence, this rule applies when both applications are the
first filings. This rule also applies when both applications
are filed in China on the same day and claim priority
through Paris convention from same previous foreign
application(s). If they are not filed on the same day or
have different priority dates, under the current Chinese
patent law, the earlier one constitutes a conflicting
application against the novelty of the latter.
It is to be noted that one cannot take advantage of
this rule when it files a PCT international application and
a Chinese utility model application on the same day, even
