2014-6-16
中国的实用新型专利
Utility Model Patent in China
邱军
柳沈律师事务所
Jun Qiu
Liu, Shen & Associates
1
Overview
 Basics
 Statistics
 Concerns
 Strategies
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2014-6-16
Patent Law
Article 2 of the Chinese Patent Law
Utility Model: any new technical solution relating to
the shape, the structure, or their combination, of a
product, which is fit for practical use.
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Timeline
 Utility Model
6-18 months
Preliminary
Examination
Filing Date
/Priority Date
Grant & Publication Date
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2014-6-16
Utility Model Patent Basics

Limited subject matter


Preliminary examination



No search before 2013
Novelty search since amendment of Guideline in 2013
Quick allowance


shape or structure of a product
Most 6-12 months
Short patent term

10 years
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Statistics on Utility Model Patent
Utility Model Applications Received by SIPO (2008-2013)
1,000,000
900,000
800,000
700,000
600,000
500,000
400,000
300,000
200,000
100,000
0
892362
740,290
585,467
409,836
310,771
225,586
2008
2009
2010
2011
2012
2013
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Utility Model Statistics: interesting?
Utility Model Applications Received: Foreign vs. Domestic (2008-2013)
900,000
800,000
4,164
700,000
600,000
734,437
2,598
500,000
400,000
300,000
200,000
7,136
5,853
1,641
1,910
885,226
581,303
407,283
308,861
100,000 223,945
0
2008 2009 2010
2011
Foreign
Domesti
c
2012
2013
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Chinese Utility Model
Utility model patents filed by foreign applicants:
0.8% !
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2014-6-16
Utility Model applications from foreign
applicants (2013)
Country
Number
Percentage*
Japan
3,048
6.8 %
USA
1,658
5.2 %
Germany
727
5.0 %
Korea
253
2.3 %
France
246
5.6%
Swiss
183
5.4%
UK
145
7.3%
* Percentage of utility model application in total number of utility model
and invention application
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Utility Model Concerns
True or false




Limited subject matter
Low quality
Not stable
Less damage
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Subject Matter

No software utility model


If no invention is made on the hardware, improvements on
software is not patentable for utility model
Redrafting as device claim would not succeed
No material utility model
 No surface design utility model
 More difficult to obtain utility model patents for
semiconductor, telecommunication industry

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Quality
 SIPO intends to improve quality of utility model patent
 Amendment of Examination Guideline Enforced on October 15, 2013
 Examiner is allowed to search for determining novelty
 Applicant might receive OA for novelty rejection
 Applicant is allowed to amend the claims in response to OA.
 Applicant should avoid overbroad claims or claims with scarce words,
which might trigger novelty search by the examiner
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Stability
 Good Stability In Invalidation Proceeding


Lower standard of inventive step
Difficulties for collecting prior use evidence
*According to the Patent Reexamination Board statistics of the invalidation decisions
from 2002 to 2012
 Utility model patent:



52.6% valid
35.6% invalid
11.8% partially invalid
 Invention patents: 58.1% valid
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Low Inventive Step Requirement
INVENTION
UTILITY MODEL
Novelty
Not disclosed by the prior art
same
Inventiveness
prominent substantive features
substantive features and
and represents a notable
represents a progress
progress
Practical
Applicability
Can be used, made, and
produced effective results
same
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Low Inventive Step Requirement
INVENTION
UTILITY MODEL
Number of
References
no limitation
one or two prior art references
Requirement on the
Field of References
the same or relevant
technical field
the same field
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Case Example 1
Invalidation Decision No. 13581 (battery)

Petitioner cited D1 – D4 against inventive step

Technical field of the utility model patent:

housing structure of battery assembly (H01M2/10)
Technical field of D1 – D4:

electric connection device or electric device (H01R13/62,
G06F3/00, H05K5/00)

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Case Example 1
Invalidation Decision No. 13581 (battery)

The utility model patent and D1-D4 have different IPC, belong
to different technical fields

The housing structure of battery assembly protected by claims 1
– 4 of the utility model patent is not a simple combination of
features, and the petitioner did not prove that said technical
solution is a simple combination of features provided in the prior
documents;

The combination of more than two cited references should not be
applicable to this case.
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Case Example 2

A patentee owns a patent protecting a diagnosis method, a
machine using the method and dominates Chinese market for
decades

A competitor in China filed a utility model patent for the machine,
and start making and selling such machines, and using such
method

The patentee sued the competitor for patent infringement of its
patent claiming the method

The competitor counter-sued the patentee for patent infringement
of their utility model patent claiming the machine

An attempt to invalid the utility model patent of the competitor
was failed due to the difficulties in establishing the chain of
evidence proving the prior use
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Case Example 3

A patentee owns a number of invention and utility models
patents for a home appliance product. Many infringers were
found in China. The clients initiated a number of patent
infringement litigations

The validities of the invention and utility models patents
were challenged by different alleged infringers in PRB

Among these invalidation requests, PRB’s decisions
concerning invention patents were not positive; but all PRB’s
decisions concerning utility model patents are in favor of the
patentee
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Infringement Damage
 No difference in damage calculation between infringement of invention
patent and infringement of utility model patent
 Sizable Damages available
 CHINT vs. SCHNEIDER (circuit breaker)


First instance: 335 million RMB (53 million USD)
Second instance: settled at 157 million RMB (25 million USD)
 Goertek vs. Knowles (microphone)

First instance: 37.2 million RMB (6 million USD)
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Valuable Utility Model
Limited subject matter
 Improved quality
 Good stability
 Sizable damage

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Strategies

Filing utility model patents instead of prosecuting invention patent for
products with short life cycle

Considering “dual filing” to improve enforceability
 Filing one invention patent and one utility model at the same day

Filing picture claims matching with real product
 Infringing products are often dead copy of patentee product
 Good patentability to survive preliminary examination and invalidation

Filing more utility models if possible to enrich your patent portfolio
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Dual Filing
 Applying both utility model patent and invention patent for
the identical invention on the same day
 Declaring to abandon the utility model patent if the
invention patent is granted
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Dual Filing
INVENTION
Grant Date
2-3 years
12-18 months
Grant Date
Filing Date
/Priority Date
Abandon Date
UTILITY MODEL
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2014-6-16
Thank You!
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