if both are filed with SIPO, since the type of application
cannot be determined at the time of filling the PCT
application and it is not certain the PCT application will
enter Chinese national phase. This rule does not apply
when an applicant files a Chinese utility model application
and enters national phase of a PCT application on the
same day, as in this case, the priority dates will be
different. As a matter of fact, the applicant may end up
with no patent, as the PCT application will destroy the
novelty of the utility model in invalidation proceedings
and most likely, the utility model will be granted first
which bars the PCT national phase application from being
granted on the ground of double patenting.
Besides the above-mentioned rule, another
interesting aspect of Chinese utility model practice is
that utility model has a patentability standard lower than
that for invention, in terms of obviousness. The
Guidelines for Examination prescribe that usually only
one or two pieces of prior art shall be used to assess the
obviousness of a utility model and examiners usually
only consider the references in the same technical field
rather than similar or related technical fields, as they do
for an invention. Thus, in practice, it is difficult to
invalidate a utility model on the ground of obviousness.
According to statistics from SIPO, up until August 31,
2008, approximately 25% of invention patents were
declared completely invalid compared with 33.3% of
utility models – a less than significant difference. In fact,
many utility models filed by Chinese applicants are not
drafted by sophisticated professionals and often leave
little room for the patentee to make amendments
during invalidation proceedings. The statistics for the
utility model could have been even better otherwise.
Since utility models are not substantively examined,
according to the new Chinese patent law, when a
patentee wants to enforce a utility model against an
alleged infringer, the infringement courts or
administrative authorities usually request the patentee
to provide a “patent right evaluation report”. The
evaluation report, which must be done by SIPO, includes
full examination results and comments. Although courts
may consider the type of patents infringed when
determining damages, this does not necessarily mean a
patentee of a utility model cannot get high amount of
damages, as shown in cases like Chint v. Schneider.
Chinese applicants seem to favor utility models as
they are cheap and fast to get and maintain while
offering an enforceable right that may not be easily
invalidated. Foreign applicants may also want to
consider filing utility model applications for strategic
reasons. Foreign applicants usually file Chinese
applications claiming priority from foreign applications,
either through the Paris Convention or PCT route. In
most cases, the applicants have an idea of the
patentability of their inventions by the time of filing
applications in China, from PCT search report,
examination report or foreign examination results. For
those applications that may have difficulty in terms of
obviousness, the applicant could strategically choose to
file utility model applications in China. Then, for the
“less inventive” inventions, applicants could get a utility
model patent, which is difficult to be invalidated for
obviousness.
For the same reason, even if an applicant missed the
priority period and have disclosed its invention, it may
still consider filing a utility model in China covering any
slight improvement made to the invention, and end up
with a valid utility model patent.
Moreover, the utility model is a quick and cost-efficient way to protect products with short life cycles.
Invention patents may not be suitable for protecting
such products since they take a couple of years to
grant, whereas utility models can offer protection much
quicker and the 10-year term may well be long enough.
In addition, the utility model is also suitable for
“urgent protection”. Where a product is to be launched
in China or abroad quickly and where there is no time
for sophisticated drafting, a utility model application
can be filed with possibly narrow scope of claims which
in extreme cases may only cover the actual product. For
multinational companies with inventions coming out of
China, this could be particularly useful. In this sense, it is
better than US provisional applications, as it results in
an enforceable right.
Lastly, applicants could strategically choose to file
both invention applications and utility model
applications. As mentioned above, the applicant could
enjoy an extended period of time during which an
enforceable right is available. Furthermore, applicants
are more than likely to obtain claims in utility model
patents and invention patents, with different scope,
which under current Chinese practice, is not considered
double patenting. In this case, the applicants do not
need to abandon the utility model and could keep both
the utility model and the invention. The applicants are
then in a strategically advantageous position as the
utility model may stand attack of validity even with
broader scope, due to different standards of
obviousness for utility model and invention. ■
Peksung Intellectual Property Ltd.
908 Shining Tower, 35 Xueyuan Road,
Haidian District, Beijing 100191
China
Tel: +86-10-8231 1199
Fax: +86-10-8231 1780; +86-10-8231 1782
Email: mail@peksung.com
Website: www.peksung.com
Author:
Stephen Yang
Partner, Patent Attorney
Peksung Intellectual Property Ltd
Email: yyong@peksung.com
