Head of Department / Patent Attorney / Mechanics Engineer
Patenting useful models in China. Subtleties and nuances
In this article the issue will be about the country with an ancient culture, with apopulation of more than 1,5 billion people and with a strive for development and prosperity, ofcourse, about China. The state, as a single organism, is trying strongly to adapt itself to the needsof its time and to survive the crisis paralyzing the world economy. Only thanks to incredibleinborn diligence and the development of technological progress, which is moving in leaps andbounds, the people of the country can count on a stable production, which is opening the way tothe world market.And how one can stay afloat in the face of fierce competition and how to protect yourselfand your product, which has recently entered the market or which soon will be shown to theworld. Of course, the issue arises about the protection of one’s products, namely, in terms ofpatenting, and here China is setting all world records, occupying a leading position in filingapplications.In addition to such subject matters of patenting as inventions and industrial designs, thereare utility models in China. The utility models, when the decision on patenting one’s technicalsolutions in China is being made, occupy an advantageous position, because the requirements forobtaining a patent for a utility model are not as strict as for inventions, and the paperwork is notso long.The validity period of the patent for a utility model is 10 years from the date of filing theapplication or from the priority date. However, it should be noted that, unlike Russia, in China, itis possible to protect as a utility model any new technical solution aimed at the configuration orstructure of the product or at the combination of these properties, provided that it is industriallyapplicable. Thus, patenting utility models in China is not limited by devices explicitly, as inRussia. In addition, it is allowed to file the applications for the same solution both for aninvention and a utility model simultaneously, however subsequently, during issuing a patent forthe invention, the patent for the utility model shall be canceled. Therefore, when choosing astrategy of patenting, it is necessary to prioritize correctly, deciding what is more preferable: alonger period of the patent protection of the product or the possibility of its rapid entry into themarket in China.Another significant difference of patenting in China is the criterion of absolute worldnovelty, which appeared in 2000 in connection with the reform of the patent law of the People'sRepublic of China. This was a necessary condition for China entering the WTO. Prior to this, thecriterion relative world novelty has existed, which meant that novelty of a technical solution wasdiscredited 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 tothe information discrediting novelty. At the same time, according to the absolute world noveltycriterion, the publications and the public use or any disclosure of the essence of the technicalsolution anywhere in the world prior to the filing date of the application shall be taken intoaccount (Article 22 of the Patent Law of China).I would like to highlight specially one peculiarity of patenting in China, which ourcompany has faced. Let us consider it on a particular example. On behalf of the client, we haveexercised the entry of his international application to the national phase to China, as aninvention. In the process of the paperwork, namely, at the stage of substantive examination, theprovisional refusal with respect to novelty was received, which was successfully overcome. Theclient, hoping to obtain a decision on granting a patent, suddenly, unexpectedly for him, receivesthe 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 andcontras 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 analogywith the Russian practice of patenting, to convert the application for an invention into anapplication for a utility model. At that time, the application was not withdrawn, and also thesubject 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 takeadvantage of it. We announced our proposal to the client, informing him that the novelty hadbeen recognized by the examiner and the presence of the inventive step for utility models wasnot required and we, with the agreement of the client, addressed to our Chinese partners with arequest to convert the application for an invention into an application for a utility model. Andwhat was our surprise when, in response to that request, we received a letter with an explanationthat the patent legislation of China did not allow such actions.According to the patent law of China, the applicant, even during exercising the entry ofhis application to the national phase to China or when filing the application with a request forpriority under the Paris Convention, should assess the chances for obtaining a patent, and heshould file an application by choice – either for an invention, or for a utility model. Furthertransformation of one subject matter into another one and vice versa is not stipulated by thelegislation of China. So, in the end, what was the outcome of this case? The client refused fromthe further consideration of the application for an invention, and we received invaluableexperience associated with the peculiarities of patenting utility models in China.