China Proposes New Examination Guidelines for Utility Models
The Utility Model (UM) in China has always been a popular choice for patent filing due to its relatively low cost and speed of prosecution. The UM prosecution only includes a preliminary examination, which is essentially a mini (stripped down) version of an invention application’s substantive examination.1 With the simplified examination process, UMs are typically granted without issue. Unfortunately, this may soon not be the case anymore.
The CNIPA2 has recently published an official letter in response to a Proposal from a CPPCC member regarding problematic patents and malicious competition based thereon in the lithium battery industry.3 4 The key messages stated in these letters is that the CNIPA is preparing a draft amendment to the Implementing Regulations and Examination Guidelines,5 emphasizing that “obviously lack of inventiveness” will be incorporated into the scope of a UM’s preliminary examination, and that the goal of such prospective change is to optimize the examination standards and the quality of granted patents in China.
Unsurprisingly, the change for UMs mentioned in the above letters was proposed a while ago. According to the proposed amendment to the Examination Guidelines published last year and recently,6 7 it appears that the scope of the preliminary examination for UMs will be significantly expanded to include an examination for inventiveness and a formal prior art search. This will likely cause an increase in prosecution time due to the more throughout examination as well as more challenging office actions. Further, procedures that used to be exclusive to invention applications, such as deferral of substantive examination and patent term adjustment, will also become available for UM applications, with one catch: for same-day applications,8 if the UM has been granted, the subsequently granted invention will not be eligible for patent term adjustment.
As such, the benefits of same-day application will potentially become less prominent compared to the current state, especially for UMs having small improvements over the prior art, although it is hard to say for sure right now, as it is not yet clear how the “obviously lacking inventiveness” standard will apply.
Nonetheless, we don’t think that UMs will lose their value entirely. At least for now, the value of UMs for marketing purposes and/or to meet certain government or university requirements still exists. Despite any potential prosecution time increase, we think UMs still have business benefits that can outweigh the cost incurred during prosecution and maintenance.
Furthermore, more in-depth examination for all UMs will help minimize the number of problematic patents overall, ensuring fair competition among patent owners in China. As you can imagine, in actual practice there are often discrepancies between different examiners when deciding whether a UM is allowable. Historically, changes in examination guidelines have forced examiners to readjust their practice, ultimately leading to more unified examination standards across the board.
While this new inventiveness standard is likely challenging for UM inventions having very subtle improvements, we expect more sophisticated UMs will benefit from a more unified (and thus more “fair”) examination standard. We look forward to seeing how this updated change will work out in practice over time.
More proposed amendments to the Examination Guidelines are underway this year. We will continue to monitor the status of the new proposed amendments and keep you updated on further developments. Stay tuned!
This article is for general informational purposes only and should not be considered legal advice or a legal opinion on a specific set of facts.
1 During the examination, the current practice is that examiners will determine whether the UM is obviously lacking novelty or practical applicability, according to Article 22.2 or 22.4 of the Patent Law, respectively, but not inventiveness.
2 China National Intellectual Property Administration, the Chinese patent office
3 Letter of the State Intellectual Property Office in Response to the Recommendation No. 8842 of the Fifth Session of the Thirteenth National People’s Congress, 20 Jul 2022, https://www.cnipa.gov.cn/art/2022/7/22/art_516_176743.html
4 Letter of the State Intellectual Property Office in Response to the Proposal No. 03510 (No. 160 of Science and Technology) of the Fifth Session of the Thirteenth National Committee of the Chinese People’s Political Consultative Conference, 29 Aug 2022, https://www.cnipa.gov.cn/art/2022/9/6/art_516_178500.html
5 Guidelines for Patent Examination (2021) and Implementing Regulations of the Patent Law
6 Appendix 1, Part I, Chapter 2.11, Notice on Revised Guidelines for Patent Examination (First Draft for Comments) (Published 3 Aug 2021), https://www.cnipa.gov.cn/art/2021/8/3/art_75_166474.html
7 Appendix 1, Part 5, Chapter 7.8.3, Notice on Revised Guidelines for Patent Examination (Second Draft for Comments) (Published 31 Oct 2022), https://www.cnipa.gov.cn/art/2022/10/31/art_75_180016.html
8 Chinese invention and utility model applications filed on the same day. For more information, see this article.