Dr. Jacqueline Lui and Ms. Yolanda Wang, colleagues at Eagle IP Ltd., were kind enough to share a guest article comparing Invention patents and Utility model patents in China. For convenience, they also included a useful table summarizing the differences between the two processes:
There are two types of patent protection in China. Invention patents have a term of 20 years and may be granted for both methods and products. Utility model patents (similar to a petty patent) may be granted in China for technical solutions that relate to shapes or structures, and have a term of 10 years from the date of filing. Utility model (UM) applications are subjected only to novelty assessment and formality examination. Invention patent applications are subjected to search and examination similar to those conducted in other major patent offices in the world and it will take approximately 3 to 5 years to complete prosecution.
Novelty requirements for UM are the same as that of invention patents in China. In particular, novelty means that, before the date of filing, no identical invention or utility model has been publicly disclosed in publications or has been publicly used or made known to the public anywhere in the world. Furthermore, there should be no other earlier-filed Chinese applications, which describe the identical invention or utility model even if the publication date thereof is after the date of filing of the present case.
The requirement for inventive step in UM in China is lower than that of invention patent. Article 22 of the PRC Patent Law defines inventiveness in invention patent as prominent substantive features that represent “notable progress” as compared to technology existing before the date of filing. For utility models, only substantive features that represent “progress” are required for inventive step.
One important advantage of filing a Chinese UM therefore is that inventiveness requirements are lower and thus it is more “difficult” to be invalidated than an invention patent for the same invention. Further, the UM right may be obtained within 12 months. For structural products that have a relatively short product life or have a relatively low technology hurdle i.e. competitors may easily reverse engineer and/or copy the technology, a Chinese UM is ideal. As with an invention patent, legal action may be initiated immediately upon grant of the Utility Model.
On the other hand, a Chinese invention patent provides longer term of protection (20 years) and is very useful for products that require a long development time or will be commercially valuable for a very long time. This is particularly true for inventions such as pharmaceutical and biotech inventions which typically require a long time to obtain regulatory approval. However, longer prosecution time is required to obtain a granted invention patent and no legal action may be taken during the pendency period. In addition, an invention patent costs more to complete prosecution than a utility model. This is also the only available patent protection available for products that do not have structural features, such as methods and composition of matter.
The following table summarizes the differences between invention patents and utility models:
If you have an inquiry regarding the above information, please contact Jacqueline Lui of Eagle IP at firstname.lastname@example.org.
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