TIPS^®  Taiwan Intellectual Property Special

China Updates

Filing Both Invention and Utility Model Patent Applications in China

Under the current Patent Law and practice in China, it is permissible to file both a utility model and an invention patent application for an identical invention-creation (inventive concept). However it is important to understand the related regulations set forth in the new Patent Examination Guidelines which came into force on July 1st 2006, before filing the applications.

Regarding filing both invention and utility model patent applications in China, even though the new patent examination guidelines stress that when the applicant chooses to abandon the granted utility model patent right when being notified by the SIPO during the substantive examination of the invention application of the same invention-creation, a written declaration to abandon the granted patent right since the filing date of the said patent must be submitted at the time of making the response to the Office Action. In other words, if the utility model application directed to the common invention-creation is uncovered before the granting of the invention patent, the applicant must choose to abandon the granted utility model patent ab initio in order to keep the invention patent. However, we will still suggest our clients to file both an invention and a utility model patent applications directed to the same invention-creation in China to take advantage of the expeditious granting of the utility model patent after formality examination.

We advise the applicant to use the utility model patent right for promotional or marketing purposes only before the granting of the pending invention patent application, because the patentee may be liable for payment for the exploitation of the patent after its abandonment. Yet, the applicant may still enforce the utility model right against infringement prior to the abandonment. According to Article 47 of the Patent Law of the People’s Republic of China (PRC), “the decision declaring the patent right invalid shall have no retroactive effect on any judgment or ruling of patent infringement which has been pronounced and enforced by the people’s court, on any decision concerning the handling of a dispute over patent infringement which has been complied with or compulsorily executed, or on any contract of patent license or of assignment of patent right which has been performed prior to the declaration of the patent right invalid.” Therefore, it is favorable to the applicant to refer to provisions in Article 47 regarding disputes over patent infringement that has been settled prior to the abandonment of the utility model patent right.