Dual filing regime in China

Dual filing of invention patents and utility models is possible under Article 9 of the Chinese Patent Law, with a dual filing statement specified in the application forms of the two applications. The applications must be filed by the same applicant on the same day and the utility model must be abandoned upon notification of grant of invention patent.

Why dual filing?

An invention patent i) has more stable right as it is substantively examined, and ii) has a longer period of protection for 20 years. However, the time taken for examination is relatively long. An invention patent is usually not granted until 2-4 years after filing.

Utility model is only valid for 10 years from the application date and is deemed as lower inventiveness compared with an invention patent. However, it can be obtained quickly, usually about 7-14 months from filing, as no substantive examination will be conducted for it.

With regard to enforceability, the invention patent is stronger than the utility model. However, utility model is much quicker and easier to get. It’s an advantage for time-sensitive products.

It is advisable to apply for both the invention and utility model for the applicant’s key products in China. In this way, the applicant can obtain quick protection of its product through the utility model, and can still achieve stronger protection of its product later when the invention patent is granted. As the inventiveness required for the utility model is lower than for the invention patent, it is possible that the utility model patent is stable even if the invention patent is rejected.

New practice of dual filing examination

The number of pending applications was very large in China, and dual filing objectively increases the number of patent applications, as actually one invention will be examined twice for dual filing. It is resource-consuming. Therefore, the patent policy will be adjusted. After a utility model patent is granted, the invention patent application on the same day will be substantively examined 4 years later. Thus, the applicants may have an added hesitation period to determine whether the invention patent is required.

Besides, the China National Intellectual Property Administration(CNIPA) recently began giving utility model applications increased scrutiny during the formal examination stage and the examination on inventive step of utility model will be improved. The outcome may be stronger utility model rights.