EIP Coffee Break
Snippets of Court Cases, Provisions, and Key Observations about China’s IP Landscape

Do Invention and UM Patents Filed on the Same Day Rise and Fall Together?

August 2021

Recently, the Intellectual Property Division of the Supreme People’s Court (SPC) issued a list of seminal (精品) cases. Although China is not a case law country, such seminal cases issued by the SPC have high guiding impact for similar cases in the future, so they are still worthy of attention.

One of the seminal cases ((2020) 最高法知民终699号) is very interesting. It involves a set of “same day applications”, i.e. an invention patent and utility model (UM) patent directed towards the same invention filed on the same day. The key issue is: if the invention patent application is rejected, what happens to the corresponding granted UM?

A bit of background. China allows patent applicants to apply for Invention and UM patents for the same invention on the same day (same-day applications). Typically the UM grants first (within 5-8 months), allowing the patentee to initiate license agreements or enforcement actions based thereon. Then later, when (and if) the time-consuming and costly invention application finally proceeds to grant, the applicant can obtain an invention patent’s longer 20-year protection term by giving up the UM patent (10 year term). Applicants welcome this dual application strategy, since it provides fast and comprehensive protection for product inventions.

In this seminal case, the applicant had obtained a granted UM earlier, but the corresponding invention patent application had been finally rejected, even after a re-examination request and administrative suit. Later the patentee initiated an infringement lawsuit based on the same-day UM patent which protects an identical technical solution. The first instance held in favor of the patentee. The SPC revoked the judgment of the first instance and held that in this case, the patent right for the utility model should be questioned.

Generally speaking, if a same-day Invention application is rejected for lacking novelty, then the related same-day UM patent must also lack novelty, and thus will not meet the grant requirements. However, if the invention application is rejected for lack of inventiveness, then the judge cannot directly arrive at the same conclusion, since inventiveness requirements for invention patents and UMs are different.

We believe that this judgment is reasonable and will effectively reduce litigation costs in similar situations. We are of view that this judgment will not have significant impact on the same-day filing strategy for high-quality inventions.

You may refer to our previous article regarding same-day filing strategy.

 

We will keep you updated on any further developments. Stay tuned for more important updates on IP law in China.

Please contact us with any questions: eip@eipgroup.asia.

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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.