1. Brief introduction of utility model patents in China.

The utility model patent system is an important component of the Chinese patent system. The purpose of utility model patents is to protect the so-called “minor inventions”, or “small innovations”, as compared to those inventions protected by invention patents. The utility model patent system of China is generally similar to those of most countries in the world. Subject matters protected by utility models patents in China are limited to new technical solutions relating to the shape or structure of a product, apparatus or device, in order to facilitate determination of the protection scopes, judgment of infringement, and execution of the patent rights. Utility model patent applications in China are subject to preliminary examination, which is more stringent than the formality examination adopted by most countries in that obvious substantive defects are also examined. The requirement for novelty of utility model patents in China is the same as the requirement for novelty of invention patents, which is higher than the requirement in many of the countries issuing utility model patents. Similar to most countries, the requirement of inventive step for utility models is lower than that for invention patents.   

2. Measures taken by the Chinese Patent Office to tighten the examination on utility model patent applications.

Before 2012, the grant rate for utility model patent application in China was close to 100%. Since 2012, as an effort to improve the quality of utility model patents, the Chinese Patent Office (CPO) has taken a series of measures to tighten the examination on utility model patent applications.

(1) According to a report published on the website of CPO^[1], the utility model examination division of CPO amended its internal examination regulations in early 2012, and broadened the scope of examination on obvious novelty defects, such that the examiner was allowed to examine the novelty of a utility model application as long as a reference document is available, whereas the examiner used to be restricted from examining the novelty of a utility model application based on information obtained through search.

(2) On 16 September 2013, CPO amended the Patent Examination Guidelines^[2]. Before this amendment, Section 11 of Chapter 2 of Part I of the Guidelines reads:

“11. Examination in Accordance with Article 22.2

In the preliminary examination, the examiner generally does not determine on search whether a utility model is obviously lack of novelty, but may determine on the information of related prior art or conflicting applications obtained not through search.”

After the amendment, this section reads:

“11. Examination in Accordance with Article 22.2

In the preliminary examination, the examiner shall determine whether a utility model is obviously lack of novelty. The examiner may determine on the information obtained of related prior art or conflicting applications.”

Similar amendments are also made to Section 13 of Chapter 2 of Part I of the Guidelines. Before the amendment, this section reads:

“13. Examination in Accordance with Article 9

In accordance with Article 9.1, for any identical invention-creation, only one patent right shall be granted. In accordance with Article 9.2, where two or more applicants file applications for patent for the identical invention-creation, the patent right shall be granted to the applicant whose application was filed first.

In the preliminary examination, whether or not a patent application for utility model may obtain a patent right according to Article 9 shall not be examined through search in general. However, if the examiner knows that there is an applicant who has filed a patent application for the identical invention-creation, he shall conduct the examination.”

After the amendment, this section reads:

“13. Examination in Accordance with Article 9

In accordance with Article 9.1, for any identical invention-creation, only one patent right shall be granted. In accordance with Article 9.2, where two or more applicants file applications for patent for the identical invention-creation, the patent right shall be granted to the applicant whose application was filed first.

In the preliminary examination, whether or not a patent application for utility model may obtain a patent right according to Article 9 shall be examined. The examiner may determine on the patents or patent applications obtained of the identical invention-creation.”

As can be seen, these amendments removed the restriction that the information used to determine whether a utility model is obviously lack of novelty, or whether a utility model is an identical invention-creation to another application, should not be obtained through search. In other words, the examiner is now allowed, and even encouraged, to determine whether a utility model is obviously lack of novelty, or whether a utility model is an identical invention-creation to another application, using information obtained through search. As the examiner can obtain much more information through search, these amendments to the Examination Guidelines render utility model patent applications much more likely to be rejected for the reason of being obviously lack of novelty, or being an identical invention-creation to another application.

(3) According to a notice of the utility model examination division of CPO^[3] issued on 30 July 2013, the examiners are encouraged to reject a utility model application for the reason of not being a “new” technical solution as prescribed in Article 2.3 of the Chinese Patent Law, without citing reference documents, if the technical solution of the application is merely a simple combination of prior art and does not produce new technical effects, or if it is merely change of relations between elements and produces the same or similar technical effects as prior art. Although inventiveness of a utility model is not examined in the preliminary examination, such rejections for not being a new technical solution as prescribed in Article 2.3 of the Chinese Patent Law are somewhat similar to rejections for not having inventiveness.  

The above measures taken by CPO have resulted in increased difficulty to obtain a utility model patent, and have significantly lowered the grant rate of utility model patent applications. In fact, according to the above mentioned notice of the utility model examination division of CPO^[3], it is their objective to reduce the grant rate of utility model patent applications to lower than 90% by the end of the year of 2013.

3. Strategies in response to the tightening.

In view of the above mentioned circumstances, it is important for inventors and applicants to understand that it can no longer be guaranteed that their product will be granted a utility model patent as long as the application has no formality defects. In addition, in order to improve the chances of a utility model application being granted a patent right, it may be advisable to handle utility model applications in a manner more similar to invention applications. In particular, when drafting the specification of a utility model application, it may be beneficial to provide more explanations on the positive technical effects of the utility model. Such explanations on the positive technical effects might be useful in arguing with the examiner on objections that the utility model is merely a simple combination of prior art or change of relations between elements. The positive technical effects can help in persuading the examiner that the utility model is indeed a “new” invention-creation. Furthermore, it is also preferable to provide more detailed embodiments in the specification, including more detailed drawings. The advantage of doing this is that if the examiner rejects all the claims for lacking novelty, additional technical features can be added into the claims without going beyond the scope of initial disclosure. Finally, it is also beneficial to draft multiple groups of claims with different subject matters, for example, components, mechanisms, devices, machines, systems, and so on, which will cover a larger protection scope, and provid multiple “lines of defense” in potential future disputes.   

To sum up, due to the measures taken by the CPO, the grant rate of utility model patent applications in China has been significantly lowered. Therefore, in order to ensure your utility model application to be granted a patent right, it is advisable that inventors and/or applicants work closely with patent agents to prepare and file a specification of higher quality, which will also improve the stability of the patent right, if granted.

References:

[1] http://www.sipo.gov.cn/wqyz/dsj/201301/t20130130_784704.html

[2] http://www.sipo.gov.cn/zwgg/jl/201311/t20131106_876947.html

[3] http://bbs.yesipo.com/simple/?t8103.html

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