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Introduction
In China, two types of industrial property rights offer protection for a technical invention, namely an invention patent and a utility model patent. One of the main advantages of a utility model is that it is not subjected to a substantive examination. Such examination, however, is mandatory for an invention patent application. As a consequence, a utility model is often granted within 6–12 months after its filing, while an invention patent application can take 3–5 years to be granted. A utility model is thus a fast way to obtain an enforceable intellectual property right in China.
Notwithstanding the fast granting process, there are some drawbacks to a utility model that need to be taken into consideration. Firstly, the lifespan is significantly shorter. A utility model has a lifespan of at most 10 years, compared to 20 years for an invention patent. Secondly, the utility model is only available for products, whereas an invention patent can also cover methods, chemical substances, new materials, etc.
A common question is: can we have both a utility model patent and an invention patent for the same (product) invention? This would combine a fast protection offered by the utility model and the advantages of the patent for the same invention.
Tempting strategy
From a European point of view, a tempting strategy is the following:
01/10/2024: file a national patent application in the country of residence, e.g. Belgium, Germany, France, etc.
15/10/2024: file a Chinese utility model application shortly after having filed the national patent application which claims priority from the earlier filed national patent application.
Note: this utility model application could be filed on the same day as the earlier national patent application as well.
Q3, 2025: a Chinese utility model patent is granted.
01/10/2025: file an international patent application under the Patent Cooperation Treaty (PCT) at the end of the priority year which claims priority from the earlier filed national patent application.
01/04/2027: enter the Chinese national phase from the international patent application as a Chinese invention patent application.
On paper, this seems like a perfect strategy for fast protection in China based on a utility model that may be superseded by the Chinese patent derived from the international application. However, as we will demonstrate, this strategy fails due to a double patenting prohibition in China.
Double patenting
In China, as in many other countries, there is a prohibition on double patenting the same invention. This is included in Article 9 of the Patent Law of the People’s Republic of China (hereinafter abbreviated as “PL”) which recites
“For any identical invention-creation, only one patent right shall be granted.”
As explained in the Chinese Guidelines for Examination (see Part II, Chapter 3, 6.1), the term “identical invention-creation” is referred to in Article 9 PL. It means that in two or more applications or patents, there exist claims. These claims have the same scope of protection. See the following example as an illustration of the rule:
For the concept of “identical invention-creation” in the above example, it needs to be checked if there is any identical claim in both applications. In this example, claim 3 of application 1 and claim 2 of application 2 are identical as they protect the same subject-matter, namely “A+B+C”. These applications thus form an identical invention-creation.
According to Article 9 PL, only one of these applications can thus be granted in order to avoid a double patenting situation.
Note: The same applies irrespective of whether one of the applications is a utility model application, as the term “patent” in Article 9 PL is intended to cover both an invention patent and a utility model patent.
Note: Only the claims are compared and not the full content of the documents.
Double patenting applied to the tempting strategy
Returning to the tempting strategy outlined above.
The Chinese invention patent application derived from the international patent application collides with the already granted utility model. If there is any identical claim in the utility model and the Chinese invention patent application, these form an identical invention-creation thus preventing the Chinese invention patent application from being granted under Article 9 PL.
There exists a solution: you can amend the claims of the Chinese invention patent application so that there is no identical claim with the already granted claims of the utility model. In practice, this may require adding a limitation from the description.
However, even if the Chinese invention patent application can be saved, it will probably be more limited than desired. The tempting strategy does therefore not necessarily offer the best protection strategy for the 20-year patent lifetime.
Exceptions to the double patenting prohibition
The Chinese legislature has provided for several exceptions to the double patenting prohibition. One such exception is included in Article 9 PL which recites:
“However, where the same applicant files applications for both a utility model patent and an invention patent with regard to the identical invention-creation on the same day, if the utility model patent granted earlier has not been terminated and the applicant declares to abandon the utility model patent, the invention patent may be granted.”
The exception applies to the situation where the same applicant has filed a utility model application and an invention patent application on the same day and is known as the “dual-filing” strategy.
Important: The Chinese Guidelines for Examination explicitly state that this exception is only applicable in situations where the utility model application and the patent application are filed on the same filing date! The priority date is not taken into account.
In this situation, the invention patent application will be examined. Once the invention patent application is ready to be granted, the applicant will receive a notification. This notice will inform them that the granted utility model must be abandoned. Alternatively, the pending invention patent application can be amended to avoid having identical claims. If the utility model is abandoned, an identical invention patent application may subsequently be granted.
Conclusion
Returning to the original question: can we have both a utility model and an invention patent for the same product invention in China?
Yes, on the condition that the “dual-filing” strategy is used and realizing that identical claims can never be granted at the same time.
In the dual-filing strategy, the utility model application and the invention patent application are filed directly in China on the same filing date. The Chinese invention patent application cannot be a national phase entry from an international application under the PCT!
An example of a better filing strategy is outlined below.
01/10/2024: File a national patent application in the country of residence, e.g. Belgium, Germany, France, etc.
15/10/2024: File a Chinese utility model application and a Chinese invention patent application shortly after having filed the national patent application. Both claim priority from the earlier filed national patent application.
Note: both applications could be filed on the same day as the earlier national patent application as well.
Q3, 2025: A Chinese utility model patent is granted.
01/10/2025: File an international application under the Patent Cooperation Treaty (PCT) at the end of the priority year which claims priority from the earlier filed national patent application to seek protection in other territories than China.
2027-2029: Withdraw granted utility model in favor of the allowable Chinese invention patent application.
The utility model application will result in a fast grant of the utility model patent. An identical invention patent may be granted after examination proceedings have concluded that the invention patent application is allowable after which the utility model can be abandoned. This avoids any double patenting issues while offering an identical protection in the invention patent which follows seamlessly the utility model protection.
As always, Gevers is eager to assist you in any patent matter. Do not hesitate to contact us!