Patent Protections in China – Make a Wise Decision for Your Products
01 February 2018

There are three types of patent rights in China, namely invention patent, utility model and design patent. Choosing the right type of patent is crucial in order to obtain a valid protection for inventions or designs. This article will give you a brief introduction on the three types of patents with our general advice on how to select a suitable type of patent rights in China.

 

Both invention patent and utility model provide protection for technical features of inventions, whereas utility model only protects novel and inventive structures or shapes or their combination of a product. Invention patent additionally protects inventions regarding methods, uses, materials, compounds and compositions. Note that composite layer structures and circuit structures fall into the scope of product structures under patent protection by utility model. Unlike utility model and invention patent, design patent aims to protect a unique appearance of a product instead of its functional or structural features. In some cases, it can be a struggle for an applicant to choose between invention patent and utility model, or between utility model and design patent, due to possible overlapping of protection within each pair.

 

Compared with invention patent, utility model is known as “petty patent”, as it encourages applicants to seek protection for inventions with relatively smaller scale. Utility Model differs from invention patent primarily in that no substantive examination would be conducted for utility model which is only subject to a preliminary examination. The examiner will examine the utility model for presence of obvious substantive defects including lack of novelty and insufficient disclosure during preliminary examination. Inventive step of utility model would not be assessed during the preliminary examination. Besides, the examination of utility model imposes lower requirement on inventive step and would be conducted after grant of utility model upon request filed at the Chinese Patent Office. Usually only one to two prior art references will be quoted from identical technical field to assess the inventive step of utility model. In addition, utility model generally takes less than one year to be granted with lower cost, in contrast to the prosecution of invention patent which normally spends two to four years.

 

Despite the fact that utility model has a lower hurdle to pass the prosecution compared with invention patent, it has a much shorter patent term of ten years, being half of that of invention patent. In addition, due to lack of substantive examination, utility model can be vulnerable to be invalidated in the post-grant stage simply because of novelty, inventive step and/or other substantive defects. In view of the above, the applicant may choose a suitable patent type according to the nature of invention and protection term desired. Alternatively, “dual filing strategy” may be adopted, in which invention patent and utility model are allowed to be filed for the same invention-creation on the same day. In this way, utility model will be granted quickly for prompt patent enforcement, followed by strong invention patent protection with longer protection period. In view of one patent right granted to any identical invention, before an official decision to grant the invention patent is made, the applicant is required to abandon the utility model unless the protection scopes of invention patent and utility model are different. However, for national entry of PCT application, dual filing is not allowed, and instead, either invention patent or utility model shall be chosen in such a case.

 

Similar to utility model, design patent does not require substantive examination and it takes only a couple of months to be granted. Design patent protects the aesthetic appearance (i.e. shape or pattern) but not any technical solution of a product. Therefore, the protection scope of design patent is defined by the drawings or photos submitted in the application and the versatility of the product design is limited within the scope. Some inventors may consider invention patent or utility model more useful and powerful than design patent. They reckon that design patent should be the game of some manufacturers in those industries with shorter product life circle such as automobile or fashion. These presumptions are true to some extent. However, design patent finds application a variety of products and is useful in a comprehensive patent filing strategy to provide better and thorough protection. In some cases, design protection can be a strong tool to exclude others from directly copying the shape or pattern of your product.

 

In view of the above, we can see the choice of a patent application would depend on a couple of factors, including the nature of an invention, product life circle, business strategy and financial budget. Applicant should consider which option(s) can help achieve efficient and effective enforcement of patent right, and make good use of the patent combinations for all-round protections.

 

The following table highlights the differences among invention patents, utility models and design patents:

 

Invention Patent

Utility Model

Design Patent

Patent term

20 years

10 years

10 years

Period of prosecution

2-4 years

< 1 year

< 1 year

Cost

Higher – mainly due to prosecution during examination stage

Lower

Lower

Examination

Both preliminary and substantive examination

Only preliminary examination

Only preliminary examination

Patentability requirements

Have to be novel with industrial use; Higher Inventiveness requirement.

Have to be novel with industrial use; Lower Inventiveness requirement.

Have to be novel and inventive with industrial use

Subject of patent

Device, method, use, material, compound and composition with functional and/or structural features

Device with structural features (only shapes and structures)

Product with aesthetic appearance

 
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