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Patenting useful models in China. Subtleties and nuances

Dec. 15, 2018

In this article the issue will be about the country with an ancient culture, with a
population of more than 1,5 billion people and with a strive for development and prosperity, of
course, about China. The state, as a single organism, is trying strongly to adapt itself to the needs
of its time and to survive the crisis paralyzing the world economy. Only thanks to incredible
inborn diligence and the development of technological progress, which is moving in leaps and
bounds, the people of the country can count on a stable production, which is opening the way to
the world market.
And how one can stay afloat in the face of fierce competition and how to protect yourself
and your product, which has recently entered the market or which soon will be shown to the
world. Of course, the issue arises about the protection of one’s products, namely, in terms of
patenting, and here China is setting all world records, occupying a leading position in filing
applications.
In addition to such subject matters of patenting as inventions and industrial designs, there
are utility models in China. The utility models, when the decision on patenting one’s technical
solutions in China is being made, occupy an advantageous position, because the requirements for
obtaining a patent for a utility model are not as strict as for inventions, and the paperwork is not
so long.
The validity period of the patent for a utility model is 10 years from the date of filing the
application or from the priority date. However, it should be noted that, unlike Russia, in China, it
is possible to protect as a utility model any new technical solution aimed at the configuration or
structure of the product or at the combination of these properties, provided that it is industrially
applicable. Thus, patenting utility models in China is not limited by devices explicitly, as in
Russia. In addition, it is allowed to file the applications for the same solution both for an
invention and a utility model simultaneously, however subsequently, during issuing a patent for
the invention, the patent for the utility model shall be canceled. Therefore, when choosing a
strategy of patenting, it is necessary to prioritize correctly, deciding what is more preferable: a
longer period of the patent protection of the product or the possibility of its rapid entry into the
market in China.
Another significant difference of patenting in China is the criterion of absolute world
novelty, which appeared in 2000 in connection with the reform of the patent law of the People's
Republic of China. This was a necessary condition for China entering the WTO. Prior to this, the
criterion relative world novelty has existed, which meant that novelty of a technical solution was
discredited by the applications filed earlier to the Patent Office, in which the similar inventions

or utility models have been claimed. However, the fact of the public use abroad does not refer to
the information discrediting novelty. At the same time, according to the absolute world novelty
criterion, the publications and the public use or any disclosure of the essence of the technical
solution anywhere in the world prior to the filing date of the application shall be taken into
account (Article 22 of the Patent Law of China).
I would like to highlight specially one peculiarity of patenting in China, which our
company has faced. Let us consider it on a particular example. On behalf of the client, we have
exercised the entry of his international application to the national phase to China, as an
invention. In the process of the paperwork, namely, at the stage of substantive examination, the
provisional refusal with respect to novelty was received, which was successfully overcome. The
client, hoping to obtain a decision on granting a patent, suddenly, unexpectedly for him, receives
the following request from the Office, in which the inventive step is declined by the examiner.
Having analyzed the request, after the consultation with the client, we weighed all pross and
contras and came to a conclusion that it would be unlikely to overcome the request. However,
the client was not ready to refuse from the application and it occurred to us to try, by analogy
with the Russian practice of patenting, to convert the application for an invention into an
application for a utility model. At that time, the application was not withdrawn, and also the
subject matter of patenting complied perfectly with utility models.
In such situation, we had a little chance to obtain a patent after all, and we tried to take
advantage of it. We announced our proposal to the client, informing him that the novelty had
been recognized by the examiner and the presence of the inventive step for utility models was
not required and we, with the agreement of the client, addressed to our Chinese partners with a
request to convert the application for an invention into an application for a utility model. And
what was our surprise when, in response to that request, we received a letter with an explanation
that the patent legislation of China did not allow such actions.
According to the patent law of China, the applicant, even during exercising the entry of
his application to the national phase to China or when filing the application with a request for
priority under the Paris Convention, should assess the chances for obtaining a patent, and he
should file an application by choice – either for an invention, or for a utility model. Further
transformation of one subject matter into another one and vice versa is not stipulated by the
legislation of China. So, in the end, what was the outcome of this case? The client refused from
the further consideration of the application for an invention, and we received invaluable
experience associated with the peculiarities of patenting utility models in China.

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Author of article

Olga Dolgikh

Olga Dolgikh

Head of Department / Patent Attorney/ Mechanics Engineer