Mr. Feng XU, Partner, Lawyer and Patent Attorney

The utility model patent, now one of the three types of patents in China, provides, together with the invention and design patents, an effective route to the protection of innovation achievements for most innovators. On November 3, 2023, the CNIPA released the Guidelines on the Determination of Subject Matter for Utility Model Patent (hereinafter "the Guidelines") with an aim to guide patent applicants to correctly understand the boundaries of the subject matter of utility model patents and to improve the quality of drafting and prosecution of utility model patent applications.

The Chinese utility model patents have the advantages of faster grant, less costs, and lower patentability requirements, with their patent value by no means significantly lower than that of the invention patents the grant of which requires substantive examination. Especially in the fields of products with short life cycles and gradual stages of innovation, the utility model patent is a powerful weapon to quickly crash competitors and crack down on counterfeit products. To this end, this article will be giving an overview of Chinese utility model patent system in the four aspects as drafting, examination, invalidation, and enforcement, and interpreting the specific provisions of the Guidelines, with advices to the innovators.

In terms of drafting, as regards utility model patents, it is necessary to first determine whether the subject matter to be claimed meets the provisions of Paragraph 3 of Article 2 of the Patent Law, that is, the basic requirements concerning the shape and/or structure of products and the technical solution using the laws of nature. Generally speaking, all tangible products with definite shapes meet the above basic requirements. Currently, the difficulty lies with the intelligent or smart hardware products which contain both improvement of hardware, and improvement of software, algorithms or artificial intelligence. In this regard, it is pointed out in the Guidelines that if improvement of the prior art lies in the hardware part and the computer program involved is known, it can be regarded as patentable subject matter. Furthermore, the Guidelines have also made it clear that a circuit that adopts a wired or wireless connection can also be considered as a circuit structure, and meets the patentability requirements.

In terms of examination, a utility model is patented in China only after it passes the preliminary examination. In the preliminary examination stage, the examiner would generally only point out obvious substantive defects, including, among other things, obvious lack of novelty. On the other hand, the inventive step of the application is generally not examined in this stage, but is evaluated only in the subsequent patent invalidation proceeding if any. As a result, the preliminary examination of a regular utility model can be finalized within 6 to 8 months. Only if obvious defects are found with the application will the examiner issue an office action. Despite this, the average time for a utility model patent to get granted is generally less than one year. The Guidelines also point out that if comments on patentability issues are received in this stage, one may also consider to address them by presenting arguments or making amendments.

In terms of patent invalidation, since the CNIPA is relatively strict with the number of prior art documents that could be combined to evaluate the inventiveness of a utility model patent, even if they are low in inventiveness, the percentage of all invalidated utility model patents is the same as that of invention patents. This Firm, Panawell, has also executed or handled a large number of cases involving utility model patent invalidations. As our practice shows, the percentage of utility model patents being invalidated due to subject matter issues is low. We also feel that the key to the validity of the subject matter as a ground for invalidation lies in the innovation point of the technical solution. If the innovation point of the technical solution lies in the shape and structure of the product, even if a known method, operation step or material is involved in the technical solution, the known method, operation step or material is only considered to be a further description of the hardware or form of the product, and it would still be deemed to meet the subject matter requirements on the utility model. However, if the innovation point of the technical solution includes a method (software algorithm, process flow, etc.) or material, it would be found contrary to the requirements on subject matter of utility model.

In terms of enforcement, we have encountered a large number of utility model patents when helping our European and American clients with their patent clearance assessment or FTO search, and we have also used utility model patents to deal with infringement complaints against counterfeit products on e-commerce platforms. Whether to make a patent risk assessment of another person's utility model patent or to enforce a utility model patent right oneself, one can make a quick preliminary analysis to determine the stability of the patent in accordance with the Guidelines on whether the utility model patent in question meets the requirements on the subject matter for the purpose to come up with a more targeted analysis and enforcement strategy, and avoid and eliminate the risk by means of invalidating these "non-standard" utility model patents if necessary.

Author:

Mr. Feng XU

Mr. Xu received his Bachelor Degree in Thermal Energy and Power Engineering in 2006 and Master Degree in Power Machinery and Engineering in 2008 from Huazhong University of Science and Technology. Mr. Xu worked as an examiner in CNIPA from 2008 to 2015, and joined Panawell in 2017. He specializes in patent drafting, prosecution, reexamination, invalidation, litigation, and infringement procedures in the field of mechanics.