The China National Intellectual Property Administration (CNIPA) has been ramping up the efforts to improve the overall quality of China’s utility model patents by giving utility model applications more scrutiny since 2017. The latest manifestation was the increased criteria of their examination in the Annual Guidelines for Facilitating High-Quality Development of Intellectual Property 2022 (《推动知识产权高质量发展年度工作指引（2022）》) issued on March 21. As a flagship document of a national drive to prioritize quality over quantity in terms of IP development, this fourth annual edition echoes the direction of improvement specified in the draft amendments to the Patent Examination Guidelines (《专利审查指南修改草案（征求意见稿）》) released for public comment on August 3, 2021, where the examination of levels of inventive step of utility model patents has been indicated to be introduced. It’s believed that this major reinforcing step will materialize with the enactment of the amended Guidelines.
Generally speaking, a utility model patent is similar to an invention patent, while it is comparatively cheaper to obtain and maintain, has a shorter term, shorter grant lag, and less stringent patentability requirements. Utility model patents can be described as second-class or minor invention patents. Unlike copyright, trademarks, or invention patents, no international convention requires countries to protect utility models and they are not subject to the TRIPS Agreement. Utility model patents are enforceable under the Paris Convention for the Protection of Industrial Property, which means that countries that do protect utility models are required to comply with rules such as national treatment and priority. Australia, Germany, Japan, and Korea grant protection to utility models, while the U.S., the U.K., and Canada don’t. China grants protection to utility models, though the term of utility model patents is set to be 10 years and that of invention patents 20 years.
A total of 3,119,990 Chinese utility model patents were granted by the CNIPA in 2021. The 3 million-plus figure was almost equal to the number of the world’s granted invention patents put together. According to the current examination rules, utility model patent applications only need to be put through the ostensibly “formal” examination—for novelty, lack of enablement, lack of support, and ineligible subject matter, in addition to more mundane formal issues. There is no compulsory substantive examination, including inventiveness examination, required on utility models. It usually takes two to five years for invention applicants to secure grants and six to twelve months for utility model applicants to secure grants. In post-grant proceedings, utility model patents are harder to be invalidated due to utility models’ inherent lower levels of inventive step as opposed to inventions, while in litigation, utility model patents undergo the same type of infringement analysis and claim construction, and have the same available injunctive relief, as regular invention patents. All this explains why Chinese applicants have been more inclined to utility model patents.
The draft amended Patent Examination Guidelines stipulate the general principle that the requirements of the levels of inventive step of utility model patent applications shall be lower than those of invention patent applications without providing concrete examination procedures yet. The plausibility of the stipulation stands considering the number of utility model applications has been almost twice invention applications in China and the introduction of the new criterion might pressure the examination system to extremes.
It is predictable that the institution of the inventive step examination might drive down filing volumes and approval rates of utility model patents at the initial stage, while a normal level will be resumed when patent applicants adapt their ways of writing claims.