HOME > English > Insights > Patent

Linda Liu & Partners

 
When the utility model infringement dispute “Zhengtai Group Co., Ltd. vs. Schneider Electric Low Voltage (Tianjin) Co., Ltd.” was settled on April 15, 2009, people were surprised to find that a small utility model could even obtain a compensation of RMB 157.5 million, and thus did various researches and discussions about utility models. When it was found that the number of utility model applications in China increased fast to cause the number of valid patents for utility models to rank the first among the numbers of the three kinds of valid patents and that about 99% of the patents for utility models belonged to the Chinese applicants (please see the following three statistical graphs), all the patent applicants that cared about China’s market felt the necessity to pay much attention to and make full use of the patent for utility model with strong Chinese characteristics.





However, after nearly three years of researches and discussions, many applicants, especially foreign applicants, still have various questions before applying for utility models in China, and the major questions are as follows: What are the noticeable issues during the drafting of a utility model application? How to understand and utilize the “two applications for an identical invention-creation” system? How to amend the utility model in each phase after the application is filed? What are the noticeable issues in the utility model invalidation procedure? How to understand and utilize the patent evaluation report for utility model?

In our opinion, such questions exist mainly because most of the previous researches and discussions focused on the theory in one particular aspect of the patent for utility model in China such as a comparison between the utility model and the invention in China or a comparison between the utility model in China and the utility model in Japan, or focused on the measures to deal with patent infringement litigation (which is the final phase of the application of utility model) and case study, without taking the practice into consideration to study the major issues and difficulties in the main phases of the utility models in China, that is, prior to the filing of the application, during the examination, and after the grant of a patent.

In view of the foregoing, we write this article and answer the aforementioned questions based on the practice from the following aspects:

I. How to draft a utility model?

II. How to understand and utilize the “two applications for an identical invention-creation” system?

III. How to amend a utility model?

IV. How to deal with invalidation of a utility model?

V. How to understand and utilize the patent evaluation report for utility model?

Considering that the utility model practice and the invention practice in China are similar in many ways, this article will emphasize the differences between the utility model and the invention.
 
I. How to Draft a Utility Model

The utility model and the invention have many similarities, so certain experience in the drafting of an invention can be applied to the drafting of a utility model. However, the utility model has its own special features as compared with the invention. In practice, being influenced by the invention, quite a few applicants draft the utility model inappropriately based on the drafting requirements and standards on the drafting of the invention, and the consequence is that the examiner may easily raise objections against the utility model, which will slow down the grant speed and even cause rejection of the application.

To avoid such a problem, the applicant should know the following main differences between the utility model and the invention in the drafting.
 

Difference ① is the most important difference between the utility model and the invention and directly determines the type of the technical solution of the utility model and the drafting manner of the features constituting the technical solution. The applicant can use Difference ② to protect a technical solution that relates to less important innovative characteristics and may be considered as lacking an inventive step in the substantive examination of the invention. The applicant can use Difference ③ to protect those solutions that do not obviously lack unity. Difference ④ causes legal uncertainty of the allowed utility model due to non-obvious defects and the risk of postponing the grant of a patent due to formality defects of the utility model application. Therefore, when drafting a utility model, the applicant should make sure that the utility model not only meets all the requirements of substantive provisions but also strictly complies with various formality provisions.

With respect to Differences ①-④, we make the following analysis of the noticeable issues during the drafting of a utility model application.

1. How to Draft a Subject Matter of a Utility Model

Definition of Utility Model: The utility model mentioned in the Chinese Patent Law refers to any new technical solution relating to the shape, the structure, or their combination, of a product, which is fit for practical use (Article 2.3 of the Chinese Patent Law).

According to this definition, the subject matter of the utility model shall have the following three elements:

(1) “a product”;

(2) “shape and/or structure of a product”;

(3) “technical solution”.

The determination of (3) “technical solution” is the same as that of the invention and will be omitted here. With regard to (1)-(2), we will make an explanation from the type of the technical solution and the technical features constituting the technical solution.

1.1 Types of the Technical Solution

The technical solution protected by a utility model shall be a product instead of a process.

Excluding the processes

The processes here shall be all the processes including industrial processes, such as manufacturing methods, methods of use, communication methods, processing methods, computer programs or the method of applying a product to a specific purpose, etc. Please be noted that, if respective components of a device are completely corresponding to respective steps of a computer program, the subject matter is actually a computer program and falls within the category of processes excluded from protection.

For example, a microprocessor, comprising:

an administration interval setting module configured to …;

an administration reminding module configured to …; and

a reminder re-start module configured to…

This technical solution actually protects a processing flow based on a computer program and is thus considered as protecting a computer program, which belongs to a process excluded from protection by a utility model.

Must be products

The products here shall be objects manufactured by industrial methods, having definite shape and structure, and occupying a certain space, wherein “objects occupying a certain space” means excluding the above-mentioned processes.

The product of a utility model shall have the following two elements:

(1) Objects having definite shape and structure, and occupying a certain space

① Objects having a shape and occupying a certain space

Shape: certain space-shape possessed by the product, which can be observed from the outside.

The product having a non-fixed shape includes:

the substance or material in gaseous state;

the substance or material in liquid state;

the substance or material in powder state;

the substance or material in particle state, etc.

The shape of a product may be a definite space-shape which exists under specific circumstances (such as a temperature range or a state of use). For example, a cup having a definite shape existing under 0°C and made of ice, or a parachute having a definite shape when it is in an open state during the falling process are subject matters eligible for protection by a utility model.

② Objects having a structure and occupying a certain space

Structure: the arrangement, organization and correlation of each part of a product.

Please be noted that the structure here refers to the macro structure of a product and does not include the molecular structure, component and metallographic structure etc. in a micro form, so the product protected by a utility model cannot be a chemical material or substance represented by a molecule structure, a component and a metallurgical structure, etc.

The structure of a product may be either the mechanical structure or the circuit structure. The mechanical structure refers to the relative position relationship, coupling relationship, and necessary mechanical matching relationship and so on of the parts of which the product consists. The circuit structure refers to the fixed connection relationship amongst the components of which the product consists, such as a circuit, a gas path, a liquid pressure line or a light path.

(2) Manufactured by industrial methods

The object which exists naturally and is not man-made is not a product. For example, a conch shell which exists naturally is not a product.

The objects industrially processed by human, including the naturally existing objects industrially processed by human, are products. For example, a trumpet-shell blowing instrument, characterized in comprising a trumpet shell and a phonating mouth, which is stably attached to an inside of a notch open at a shell edge at a side of an abdominal axis of the trumpet shell and which consists of a phonating cavity and a phonating tongue, is a product.

1.2 Technical Features Constituting the Technical Solution

The following paragraphs divide the technical features constituting the technical solution into shape features, structural features, material features, method features, functional features, and parameter features, and explain the relationship between each of these features and the subject matter of the utility model.

(1) Shape features

A product may have a certain technical feature of non-fixed shape substance, such as the substance in gaseous state, liquid state, powder state or particle state, provided that it is defined by the structural feature of the product. For example, ethyl alcohol in a thermometer is a liquid having no fixed shape, but ethyl alcohol is limited by the glass shell of the thermometer, so it is permitted to have ethyl alcohol of non-fixed shape included in the technical solution relating to the shape or structure of the thermometer.

The biological shape or naturally-formed shape cannot be regarded as the shape feature of a product. For example, neither the shape of a miniature tree growing in a potted landscape nor the shape of naturally-formed rockery can be regarded as the shape feature of a product, because the shape of these objects have an uncertainty and cannot be used to define the shape of the claimed product.

However, the technical features of a product may be the shapes for imitating natural objects to solve a technical problem. For example, a peach-shaped eccentric wheel can produce a reciprocating vibration and thus is a subject matter eligible for protection by a utility model.

The technical features of a product can use corresponding letters to define the shape of the product. For example, a “Y” shape can be used to represent the shape of an object. However, the shape of an object cannot be represented by a drawing, and the drawing should not be put into a claim. For a shape that indeed cannot be described, a design application can be filed.

(2) Structural features

As for the feature of a line in a product structure, in order to make the technical solution more clear and concise, the structure of the line can be described according to the flow direction of a medium flow in a circuit, gas path, liquid pressure line, light path, etc. The structure of a circuit can be described based on the flow direction of a signal flow in the circuit, and the spatial connection between respective devices in a pipeline can be described based on the flow process of a fluid in the pipeline.

For example, an ADC circuit, characterized in that: an input voltage is converted into an output current via a voltage-current conversion circuit, and a feedback current produced by a feedback current circuit is combined with the input current to charge a capacitance; the produced charging voltage outputs a thermometer code via a comparison circuit, and the output thermometer code is input into a logic module; a digital signal is output through an operation by the logic module. This solution protects a circuit structure and describes the flow manner of the signal in the circuit, so it is a subject matter eligible for protection by a utility model.

A composite layer structure may be regarded as a structural feature of a product. A carburized layer, an oxide layer, etc. of a product belong to the composite layer structure. The composite layer structure forms different layers in a special area through a technical process and a physical modification, and thus can be protected by a utility model. The composite layer is not related with the thickness of the layers, the degree of evenness, the number of layers and visibility by the human eyes. If different layers are not formed in a special area, the protection of a utility model cannot be sought. For example, if metal powder is mixed into a surface layer of leather to form a shining surface layer, since the metal powder and the surface layer do not form two special layers, this feature cannot be considered as the structure of a product.

The structural features of a product do not include an information layer formed on the surface of a product by printing or drawing for an advertising purpose and containing the content such as patterns, characters and symbols. Whether a product including such an information layer is a subject matter eligible for protection by a utility model depends on whether this product is a technical solution.

The scale on the surface of a product is a kind of structure. For example, a medical detection device, characterized in that a scale is provided at a front end of the device, is a subject matter eligible for protection by a utility model.

(3) Material features

The technical features of a product cannot contain unknown materials, i.e., the name of the materials, the molecular structure, component or metallographic structure of the material.

The technical features of a product can contain the names of known materials. The material known in the prior art may be used in a product which has its own shape and structure, that is, a known material can be used to replace all or some of the materials for making the product. For example, composite floor boards, plastic cup, heart catheter holder made of alloy with memory, is not improvement relating to the material per se. In order to prevent the examiner from doubting that the name of the material of the product is the name of an unknown material, it is suggested to explain the source of the material in the description.

For example, the (2008) No. FS14551 Reexamination Decision on a utility model application with Application No. 200520061438.7 and the title “Microwave Slow Cooker” relate to the following claims:

“1. A microwave slow cooker, comprising: a cooker body (1) for accommodating food, a cover body (2) fitted with the cooker body, characterized in that the cooker body is a composite layer having an outer layer as a heating layer (1.1) for absorbing microwave, an inner layer as a glass or purple sand or ceramic layer (1.3), and a microwave blocking layer (1.2) between the heating layer and the ceramic layer.

2. The microwave slow cooker according to claim 1, characterized in that the heating layer is a glass or purple sand or ceramic layer containing ferrite.”

The Patent Reexamination Board (hereinafter referred to as the Board) pointed out in the Notification of Reexamination that the feature “the heating layer is a glass or purple sand or ceramic layer containing ferrite” in claim 2 only relates to the composition of the heating layer and is actually a technical solution proposed for the material per se, thereby not being a subject matter eligible for protection by a utility model. The petitioner then submitted seven attachments to prove that the material defined in claim 2 is a known material in the prior art. The Board finally accepted the applicant’s argument.

In the above case, if the applicant could provide the source of the material of claim 2 in the description, there would have been a small possibility for the Board to doubt the subject matter.

If a known material does not have a general name, the applicant can invent a name in the form of a technical term, point out the source of this material, and add the invented name to the claims so as to define the shape or structure of the product.

At present, even for a known material, it is usually disallowed to add the molecular structure, component and metallographic structure of the material to the claims.

For example, a high-strength easy-to-cut cast iron having a metallographic organization of 30 to 95% ferrite and needle graphite, wherein the metallographic organization at a central position is 90% or above of pearlite. Since this claim defines the metallographic structure, it does not relate to a subject matter eligible for protection by a utility model.

For example, a rhombic tablet, comprising: 20% of component A, 40% of component B, and 40% of component C. Since this claim contains the shape feature “rhombic” and the components, this solution is an improvement to the material per se by using components as features, it is not eligible for protection by a utility model.

(4) Method features

If the technical solution of a product includes not only features of shape and structure but also an improvement to the method per se, e.g. if it includes technical features defining the manufacturing or using method of a product or a computer program, it is not eligible for protection by a utility model. For example, a wooden toothpick, whose main part is cylindrical and whose end parts are conical, characterized in that the wooden toothpick is processed into a predetermined shape, immersed in medical bactericide for 5 to 20 minutes, and then taken out and aired. Since this claim includes an improvement to the method per se, it does not relate to a subject matter eligible for protection by a utility model.

The technical features of a product cannot include names of unknown methods but may include the names of known methods. It is allowed to use the name of a known method to define the shape or structure of a product, but the steps and process conditions of the method should not be included. For example, if the connection between different parts is defined by the name of a known method such as soldering or riveting, this is not an improvement to the method per se. For example, a rear axle housing for a vehicle, comprising: a rear axle housing body (1) and several axle sleeves (2) … the axle sleeves (2) and the rear axle housing body (1) are riveted after hot fitting, and the axle sleeves (2) are welded to the outside of the rear axle housing body (1). The terms “riveting” and “welding” in the above technical solution are names of known methods, and these terms define the structural relationship between different parts.

If the applicant wants to use a known method to define the shape or structure of a product but this method does not have a common name, the applicant can invent a name in the description in the form of a technical term, point out the source of the method, and define the corresponding feature of the product by using the name of this method.

Based on the above explanation of material features and method features, we give the following suggestions on the drafting of a claim of a utility model including material features and method features:

1) The characterizing portion of the claim should try not to include material features or method features; otherwise there is a large risk that the claim will not relate to a subject matter eligible for protection by a utility model.

2) The material features or method features included in the claim should not be unknown materials or unknown methods, and in particular, they should not be described as being the improvement of the utility model over the prior art; otherwise there is a large risk that the claim will not relate to a subject matter eligible for protection by a utility model.

3) The claim should not use a combination of known materials and/or known methods to express a certain material feature or method feature. Whether such a combination remains a known material or a known method would be open to discussion. In fact, a combination of known materials is not necessarily a known material, while a combination of known methods is not necessarily a known method. If such a combination cannot be avoided, it is suggested to do a necessary search during the drafting of the claim and to discuss such a combination in detail in the description so as to convince a person skilled in the art that such a combination is still a known material (e.g. the reexamination case for “Microwave Slow Cooker”) or a known method. If the applicant can prove that such a combination is known in this field, it is preferred to use the commonly accepted name for it. What is the most important is that the applicant should avoid describing such a combination as being an innovative feature of the utility model.

4) The applicant should try to use the names of known materials or known methods to express material features or method features included in the claim. In such a way, there is usually a small probability that the claim will be considered as relating to a subject matter excluded from patent protection.

(5) Functional features

The technical features of a product may include functional features but it is not allowed to only use functional features. For example, a ball pencil capable of writing in different colors. The technical solution of this product only describes the function of the ball pencil without describing other technical features, so it does not relate to a subject matter eligible for protection by a utility model.

The technical features of a product may be a functional module, but this functional module must be an entity module.

For example, an electronic medicine administration reminder, characterized in comprising an upper cover fixedly connected to a bottle cover, a shell … a microprocessor configured to set an administration interval and a notification is provided inside the shell … the microprocessor comprising:

an administration interval setting module configured to …;

an administration reminding module configured to …; and

a reminder re-start module configured to…

The technical solution of the microprocessor includes not only hardware but also functional modules that actually protect a computer program processing flow, and these functional modules are not subject matters eligible for protection by a utility model and should be deleted.

For example, a portable CANBUS tester, characterized in comprising a main chip of an AT90CAN128 control circuit, wherein the main chip is respectively connected to a TFT liquid crystal display module, a touch key, a first crystal oscillation module, a control logic module, a USB interface chip, a photoelectric isolation module, and a reset circuit; the photoelectric isolation module is also respectively connected to a power input module and a CAN transceiver chip; the USB interface chip is also respectively connected to the control logical module, a second crystal oscillation module and the USB interface module; the CAN transceiver chip is also connected to a device to be tested.

Although the technical solution of this tester has a plurality of modules, these modules are apparently hardware modules and are subject matters eligible for protection by a utility model.

(6) Parameter features

Parameters can be used to define the technical solution of a product but should refer to those parameters that can define the shape and structure of the product or those parameters that can define the functions of specific parts.

For example, a rubber lining sleeve capable of reducing rolling traces and rubbing traces of strip steels, characterized in comprising a steel sleeve externally connected to a polyurethane protecting sheath which has a surface roughness of Ra 8-10 and a hardness of HS = 50-55. The values of roughness and hardness in this solution define the specific structure of the protecting sheath, and are subject matters eligible for protection by a utility model.

For example, an anti-interference power circuit structure, comprising a bleeder circuit consisting of a first resistor, a second resistor and a third resistor that are connected in series with each other …; an analog signal V is loaded to the other end of the first resistor, and a voltage of +5V is loaded to a negative electrode of the diode. The voltage value in this solution defines the function of the diode, and is a subject matter eligible for protection by a utility model.

However, please be noted that the parameters of a product do not include parameter features in the improved process.

For example, an anti-abrasion flood board, characterized in comprising four layers including an anti-abrasion layer, a decorative layer, an intermediate layer and a bottom layer from up to bottom … the pressure intensity of hot-pressing is 2.0~2.2MPa, the temperature of hot pressing is 180~200℃, and the molding is finished by keeping pressure for 5~10 minutes. The parameters in this solution define the improved process parameters and thus are not parameter features of a product of a utility model.

Although the above paragraphs discuss “types of the technical solution” and “technical features constituting the technical solution” for the utility model based on A2.3, please be noted that during the actual preliminary examination process, if the type of the claim does not relate to a subject matter eligible for protection by a utility model, the examiner will usually issue an Office Action on the grounds that the technical solution violates A2.3 of the Chinese Patent Law; if the claim includes a feature that is not a subject matter for protection by a utility model, the examiner will usually directly require the applicant to delete this feature based on the conciseness requirement in A26.4 of the Chinese Patent Law. For example, the issued Office Action may point out that “this claim includes the working principle/working process/working steps, which cause this claim to be not concise and should be deleted.”

The issuance of any of the above Office Actions may cause the applicant to bear a large risk, for example, the risk of forcedly deleting some features from the claim or even being in a situation where it is impossible to make amendments and the only choice is to withdraw the application. Therefore, when drafting a utility model, the applicant should pay enough attention to the subject matter of the utility model and determine whether the type of the claimed solution is a subject matter eligible for protection by a utility model based on the above-mentioned major issues about the subject matter of the utility model so that the claims of the drafted utility model do not contain features that are not subject matters eligible for protection by a utility model.
 
2. How to File a Utility Model Application Based on the Degree of Inventiveness

As mentioned above, China only conducts the preliminary examination over utility model applications, and the preliminary examination does not assess the inventive step. In other words, even if the utility model application does not involve an inventive step, it can still be approved. However, in order to ensure legal certainty of the utility model, the applicant should pay attention to the inventive step of the utility model before filing the application.

Pursuant to A22.3 of the Chinese Patent Law, the inventiveness of an invention means that compared with the prior art, the invention has prominent substantive features and represents notable progress; the inventiveness of a utility model means that compared with the prior art, the utility model has substantive features and represents progress. Therefore, the inventiveness standard for a utility model is lower than that for an invention, which is reflected in the following aspects:

(1) Field of Prior Art References

For an invention, the examiner shall consider not only the technical field to which the invention belongs but also an approximate or relevant technical field as well as other technical fields in which the problem to be solved by the invention can prompt a person skilled in the art to look for technical means.

For a utility model, the examiner will normally focus on the technical field to which the utility model belongs. However, where there is a clear technical teaching, for example, where there is an explicit description in the prior art, to prompt a person skilled in the art to look for technical means in an approximate or relevant technical field, the close or relevant technical field may be considered.

For example, if the solution of a food cutting machine belongs to the mechanical field of food processing, during the inventive step assessment, a person skilled in the art will first of all consider the cutting machine in the prior art. Where there is a clear technical teaching in the prior art, the prior art in an approximate or relevant mechanical field of food processing or in an even general mechanical field can be considered. The identical or proximate field obviously does not include a medical instrument field, and the structure of an adjustable box pressure gauge for filling in pressure to denture plastic cannot be used to assess the inventive step of the food cutting machine.

(2) The Number of Prior art References

For an invention application, one, two or more prior art references may be cited to assess its inventive step.

For a utility model, normally one or two prior art references may be cited to assess its inventive step. Where the utility model is made by simply aggregating some prior art means, the examiner may, according to the circumstance of the case, cite more than two prior art references to assess its inventive step.

The expression “simple aggregation” can be understood based on the following content under the heading of “Invention by Combination” in the Guidelines for Patent Examination, Part II, chapter 4, section 4.2 for assessing the inventive step of an invention: “If a claimed invention is merely an aggregation or juxtaposition of certain known products or processes, each functioning in its routine way, and the overall technical effect is just the sum of the technical effects of each part without any functional interaction between the combined technical features, that is, the claimed invention is just a simple aggregation of features, then the invention by combination does not involve an inventive step.”

For example, please see the following claim:

“1. A heat pipe radiator, characterized in comprising:

a base provided with an opening portion;

a U-shaped heat conductive plate positioned in the opening portion and provided with a receiving portion;

a heat dissipating body positioned on the base;

at least one heat pipe having at least one flat-shaped heated end and a cooled end, the heated end being positioned on the heat conductive plate and contacting the heat dissipating body, the cooled end being positioned on an end face of the heat dissipating body.”

（http://www.sipo.gov.cn/ztzl/ywzt/zlfswjdpx/201103/t20110324_590914.html）

Compared with Reference 1—the closest prior art—claim 1 only has the following distinguishing technical features: 1. the heat conductive plate is U-shaped and is provided with a receiving portion; 2. the heat pipe has a flat-shaped heated end and a cooled end. In the case where Reference 2 discloses the distinguishing technical feature 1 while Reference 3 discloses the distinguishing technical feature 2, since the distinguishing technical features 1 and 2 do not cooperate with or affect each other (i.e., they are not interrelated), claim 1 does not involve an inventive step over a combination of References 1-3.

By making use of the above two characteristics of the utility model, the applicant can file a utility model application for a technical solution that has a low degree of inventiveness and may not pass the substantive examination of the invention. It is easiest for the following two types of technical solutions having a low degree of inventiveness to obtain a utility model:

(1) Most of the features of the technical solution or the distinguishing technical features of this technical solution from the closest prior art are not disclosed by the technical field to which the technical solution belongs. Although the proximate or close technical field discloses most of the features of the technical solution or the distinguishing technical features of the technical solution, the prior art in the proximate or close technical field does not give a clear technical teaching on the application or combination of said features, that is, there is no explicit description in the prior art to prompt a person skilled in the art to look for technical means in the proximate or relevant technical field.

(2) Three or more prior art references are needed to assess the inventive step of the technical solution, and the technical solution is not a “simple aggregation” of the three or more prior art references.

Please be noted that a utility model application for these two types of invention-creations only increases the grant possibility as compared with an invention application, and whether the finally allowed claims of the utility model involve an inventive step depends on the sufficiency of evidence or reasons provided by the possible invalidation requestor and the inventive step assessment standards of the Board in the subsequent procedure. The inventive step will be further discussed in the following chapter concerning the invalidation procedure.
 
3. How to Guarantee Unity of a Utility Model

Pursuant to A31.1 of the Chinese Patent Law, “One invention or utility model application shall be limited to only one invention or utility model. Two or more inventions or utility models that belong to a single general inventive concept may be filed as one application.” The section “9. Examination in Accordance with Article 31.1” in the Guidelines for Patent Examination, Part 1, chapter 2 explicitly prescribes that the unity examination of the utility model application is only limited to the examination of “obvious lack of unity”.

The obvious lack of unity means that before search for any prior art reference, it can be determined that several technical solutions do not share any identical or corresponding technical features or the identical or corresponding technical feature contained therein are common technical means in this field, so these technical solutions do not contain any identical or corresponding special technical feature that defines a contribution which the utility model makes over the prior art, and the several technical solutions obviously lack unity. For example, one application includes two independent claims claiming a seat of a two-wheeled vehicle and a wheel of a two-wheeled vehicle respectively, and these two claims do not share any identical or corresponding structural or shape features, so they do not share identical or corresponding special technical features and they obviously lack unity. This conclusion can be drawn before doing any search.

In order to prevent a utility model from obviously lacking unity, at least the following two issues should be noticed:

First, the applicant should at least guarantee that there are identical or corresponding features between a plurality of technical solutions of independent claims in the claims, and if necessary, the applicant should explain in the description that these identical or corresponding technical feature are special technical features that define a contribution which the utility model makes over the prior art.

Second, the applicant should guarantee that besides the features of the prior art mentioned in the Background Art of the description, there are still identical or corresponding features between a plurality of technical solutions of independent claims in the claims. Since the preliminary examination of the utility model does not search for any prior art reference, the background art is considered as the prior art used when determining special technical features. The preliminary examination will determine whether the plurality of technical solutions from which the features of the prior art are excluded share corresponding or identical features so as to conclude whether there is unity between the claims.

For example, the technical solution in the Background Art of a utility model application includes features a and b, and the claims include two solutions, wherein Solution 1 includes features a, b and c, while Solution 2 includes features a, b and d. In this case, besides the features a and b, Solution 1 has the feature c, and Solution 2 has the feature d. If it is impossible to prove that the features c and d are identical or corresponding technical features, Solution 1 and Solution 2 will be considered as obviously lacking unity.

After meeting the above two requirements, the applicant can try to protect as more technical solutions as possible in one utility model application and can even protect the technical solutions that essentially lack unity if the drafting manner is appropriate, so as to reduce the costs brought by a divisional application.
 
4. How to Enhance Legal Certainty of a Utility Model and Accelerate the Grant Speed

(1) Preliminary Examination

In order to enhance legal certainty of a utility model and accelerate the grant speed, we should first know the content of the preliminary examination for a utility model. The preliminary examination for a utility model mainly includes the formality examination of the application document and the examination of obvious substantive defects.

The content of the formality examination of the application document is as follows: the filed documents (A26.1-2), the language of the documents, etc. (R3), two copies of the documents (R15.1), the specific content of the request (R16), the formality provisions on the description, claims, drawings and Abstract (R17-23), amendment timing: voluntary rectification (R51), amendment manner: replacement sheets (R52), signature/seal, the change of the bibliographic data (R119), the font, drawing, and numbering (R121), priority right (A30, R31), wherein the description of the utility model shall (i.e., must) include the appended drawings representing the shape or structure or their combination of the claimed product.

The content of the examination of obvious substantive defects of the application document is as follows: subject matters excluded from protection (A5, A25), subject matters eligible for protection (A2.3), obvious lack of novelty and practical applicability (A22.2, A22.4), filing of an application by a foreigner and his patent agency (A18, A19.1), confidential examination (A20.1), sufficient disclosure (A26.3),the claims being supported by the description or being clear (A26.4), unity, divisional applications (A31.1, R43.1), the amendments going beyond the scope of the original disclosure (A33), double patenting (A9). Compared with the substantive examination for an invention, the difference of the examination of the obvious substantive defects is mainly reflected in the word “obvious”.

The examination of obvious lack of novelty means that without doing a search, the reference documents mentioned in the Background Art of the application, the reference documents mentioned in the PCT Search Report of the application and concerning novelty, the documents that cannot enjoy a grace period of novelty and can destroy novelty, or the earlier applications whose priority cannot be claimed and which can destroy novelty can be used to assess the novelty of the claims. Please be noted that no inventive step assessment is made for the utility model, even if the PCT Search Report mentions the reference documents concerning the inventive step.

The defects of obvious lack of clarity, lack of support from the description, insufficient disclosure, and lack of essential technical features are mainly reflected in the formality. For example, the claims, in particular independent claims, should be repeated in the description of the utility model in a complete and identical manner; otherwise the claims may be deemed by the examiner as lacking support from the description. Whether the claims are essentially supported by the description can be only determined after fully mastering the technology or even after searching for the prior art, and such a determination is not made in the preliminary examination for a utility model.

Due to the above characteristics of the preliminary examination for a utility model, the allowed claims of the utility model may lack novelty and inventive step or suffer from other non-obvious substantive defects, which may cause the claims to be legally uncertain.

In addition, since the preliminary examination of the utility model emphasizes on the formality, it has very strict requirements on the drafting manner. For example, the examiner once issues a Notification to Make Rectification on the lack of “major usage” in the Abstract of a utility model (R23.1 of the Implementing Regulations of the Chinese Patent Law) and the lack of a solution to solve the technical problem in the Summary of the Utility Model in the description (R17.1(3) of the Implementing Regulations of the Chinese Patent Law). An invention application is unlikely to receive an Office Action on such defects.

In order to acquire a patent for utility model without dealing with any notification and save the application time, the applicant should follow stricter formality requirements to draft a utility model than the case of an invention.

(2) Noticeable Issues in Drafting a Utility Model

The following paragraphs list some common noticeable issues in the formality when drafting the claims of a utility model:

1) The applicant should try to make all the contents of the claims be written in the “Summary of the Utility Model” in the description in completely the same manner so that the examiner will not raise an objection that the claims are not supported by the description.

2) The applicant should try to use the expression “characterized in that …” or other similar expressions in the characterizing portions of the independent claims to indicate the distinguishing technical features of the utility model from the closest prior art.

3) The applicant should try not to make the claims contain the words that may be considered by the examiner as being unclear. For example, the applicant should try not to use the words such as “thick”, “thin”, “weak”, “high temperature”, “high pressure”, “wide range”, “low”, “approximately”, “slightly”, “close to”, “so on”, “for example”, “had better”, “preferably”, “if necessary”; “may also”, etc., so that the examiner will not doubt clarity of the claims.

4) The applicant should try not to use features of functions or effects to define the claims, and the characterizing portion should not purely describe the functions of the utility model. The use of features of functions or effects to define the utility model is only allowed when one technical feature cannot be defined by a structural feature or when it is more appropriate to use a feature of function or effect to define the technical feature than the structural feature and this function or effect is fully explained in the description.

5) The applicant should try not to use negative clauses or exclusion clauses which will cause the protection scope of the claim to be unclear. For example, “a magnetic message chair, characterized in that a magnetic therapy device can be removed” or “a strap-type sports back-pack, characterized in that it does not have a strap.”

6) The dependent claims should only refer to the preceding claims. A multiple dependent claim that refers to two or more claims shall only refer to the preceding claims in an alternative manner and shall not serve as a basis for another multiple dependent claim, i.e., a following multiple dependent claim shall not refer to a preceding multiple dependent claim.

Besides 1)-6), the applicant should also make the drafting of the claims meet the other formality requirements prescribed by R19-22 of the Implementing Regulations of the Chinese Patent Law.

Further, the drafting of the description, drawings, Abstract and drawing of the Abstract of a utility model should strictly comply with R17, 18, 23 of the Chinese Patent Law in the formality so as to prevent the examiner from issuing an Office Action on the grounds that the application document does not meet the formality requirements on the details (e.g. as mentioned above, the Abstract lacks “major usage”).

Apart from the above-mentioned common noticeable issues, it is preferable for the applicant to add other noticeable issues on the special requirements in the specific fields.

(3) Self-check before Filing an Application

In order to compensate the consequence of the preliminary examination for a utility model that merely focuses on obvious defects, we suggest doing self-check before filing an application to determine whether the utility model application to be filed complies with R65.2 of the Implementing Regulations of the Chinese Patent Law, and specifically, whether the application complies with the following provisions:

whether the application relates to a subject matter excluded from patent protection under A5 or A25 of the Chinese Patent Law;

whether the application relates to a subject matter prescribed by A2.3 of the Chinese Patent Law;

whether the application possesses practical applicability as prescribed by A22.4 of the Chinese Patent Law;

whether the subject matter for patent protection is sufficiently disclosed in accordance with A26.3 of the Chinese Patent Law;

whether the application possesses novelty as prescribed by A22.2 of the Chinese Patent Law;

whether the application involves an inventive step as prescribed by A22.3 of the Chinese Patent Law;

whether the application complies with the provision that the claims shall be supported by the description and be clear and concise under A26.4 of the Chinese Patent Law;

whether the application complies with the provision that the independent claims shall have essential technical features necessary for solving the technical problem under R20.2 of the Implementing Regulations of the Chinese Patent Law; and

whether the divisional utility model application complies with the provision that a divisional application shall not go beyond the scope of the disclosure of the original application under R43.1 of the Implementing Regulations of the Chinese Patent Law.

The novelty or inventive step assessment had better be made based on the searched reference documents.

Apart from the self-check of substantive provisions, it is preferable for the applicant to do a self-check over other formality provisions so as to reduce, to the largest extent, the possibility that the examiner for preliminary examination raises objections and issues a Notification to Make Rectification or an Office Action.

For important applications, the self-check process had better be done by patent attorneys who are familiar with the patent practice in China, and a purely formality check should be avoided so that the check result can survive invalidation by other persons and accelerate the grant speed.

We provide a “Confirmation Form of Evaluation and Amendment of Utility Model Application”, which relates to the self-check items concerning major issues except the novelty or inventiveness issue, and the applicant or the entrusted patent attorney can check all the items in this confirmation form.

The patent attorney can confirm the discovered defects with the applicant and amend the application document accordingly so that many possible formality defects or even the defects that may affect stability of the patent right can be overcome before the application is filed.
 

 
II. How to Understand and Utilize the “Two Applications for an Identical Invention-creation” System

After drafting the application document to be filed, the applicant should consider whether to file two applications for an identical invention-creation. The “two applications for an identical invention-creation” system was generated in the 1990s. During that time period, the number of patent applications accepted by the SIPO each year increased very fast and it would take even six to seven years for some invention applications to be approved, which caused the applicants to be extremely unsatisfied. In this situation, without revising the Chinese Patent Law and the Implementing Regulations of the Chinese Patent Law, the SIPO adopted a temporary measure, that is, the applicant was allowed to file both an invention application and a utility model application for the same invention-creation either on the same day or successively. In this way, the applicant can first file a utility model application to timely obtain patent protection for an invention-creation, and after an invention application for the same invention-creation meets the patentability conditions, as long as the applicant declares that he or it abandons the obtained utility model, the invention application can be approved.

However, the above measure might cause the following unreasonable phenomena: (1) if the applicant first files a utility model application and then files an invention application, the applicant may obtain a term of protection of more than twenty years; (2) before the applicant obtains a patent for invention, the previously granted patent for utility model may have terminated due to abandonment or due to the expiration of the term of protection and thus have entered the public field; if a patent for invention is then granted for this technique, the problem of again including the technique that has entered the public field in the protection scope of the patent right will occur.

In the 21st century, the problem of accumulation of a great amount of patent applications has been greatly relieved. Since the “two applications for an identical invention-creation” system might cause the above-mentioned unreasonable phenomena, when revising the Chinese Patent Law for the third time in 2008, the SIPO raised the question of whether it was still necessary to maintain the “two applications for an identical invention-creation” system and invited public opinions. The discussion result was that most of the people believed that this measure provided more options for the applicant and was suitable for the special situation of China, so they suggested keeping this system. Thus, in the Chinese Patent Law that was revised for the third time, this system is still maintained but some restrictions are imposed on this system to overcome the above-mentioned unreasonable phenomena. Specifically, the Chinese Patent Law that was revised for the third time prescribes that the applicant shall file an invention application and a utility model application on the same day so that the applicant will not obtain a term of protection exceeding twenty years. On the other hand, this Law prescribes that the patent for invention can be obtained by abandoning the patent for utility model only when the previously obtained patent for utility model does not terminate, thereby preventing the problem of patenting the technique that has entered the public field.

At present, although the examination duration in China is greatly shortened than the past, several years are still needed. Thus, if the applicant desires to obtain a very long term of protection and also obtain patent protection as soon as possible, we believe that the “two applications for an identical invention-creation” system is still a very useful system. The following paragraphs will introduce this system from the laws and regulations and the conditions for applying this system, etc.

1. Relevant Laws and Regulations

Pursuant to A9.1 of the Chinese Patent Law, for any identical invention-creation, only one patent right shall be granted; where an applicant files on the same day applications for both patent for utility model and patent for invention relating to the identical invention-creation, the applicant declares to abandon the patent for utility model which has been granted and does not terminate, the patent for invention may be granted.

Pursuant to R41.2-5 of the Implementing Regulations of the Chinese Patent Law:

Where an applicant files on the same day (means the date of filing) applications for both a patent for utility model and a patent for invention for the identical invention-creation, he or it shall state respectively upon filing the application that another patent application for the identical invention-creation has been filed by him or it. If the applicant fails to do so, the issue shall be handled according to the provisions of Article 9, paragraph one of the Patent Law, only one patent right shall be granted for an identical invention-creation.

Where the patent administration department under the State Council makes an announcement of the grant of patent for utility model, the statement of the applicant in accordance with the provision of paragraph two of this Rule that he has simultaneously filed an application for a patent for invention shall be announced.

Where it is found after examination that there is no cause for rejection of the application for patent for invention, the patent administration department under the State Council shall notify the applicant to declare, within the specified time limit, the abandonment of his or its patent for utility model. If the applicant so declares, the patent administration department under the State Council shall make the decision to grant a patent for invention, and announce at the same time both the grant of the patent for invention and the declaration of the applicant to abandon his or its patent for utility model. If the applicant refuses to abandon his or its patent for utility model, the patent administration department under the State Council shall reject the application for patent for invention. If the applicant fails to respond within the time limit, the applicant for patent for invention shall be deemed to have been withdrawn.

The patent right for utility model ceases from the date of the announcement of grant of the patent for invention.
 
2. Advantages of the “Two Applications for an Identical Invention-creation” System

Simply speaking, compared with the filing of only an invention application, the advantage of the “two applications for an identical invention-creation” system is that it can obtain several years of patent protection at a small cost before the patent for invention is granted. Specifically, when a foreign applicant files a patent application in China, the translation cost is very large. However, if two applications for an identical invention-creation are filed, since the invention application and the utility model application usually use almost the same application document, compared with the filing of only an invention application, the two applications for an identical invention-creation only needs to add a small cost such as the application fee for utility model.

On the other hand, in China, although a temporary protection is provided for the applicant after the publication of an invention application, the applicant can file a lawsuit at the court only after the invention application is approved. However, if two applications for an identical invention-creation are filed, the applicant can file a lawsuit once he or it obtains a patent for utility model; moreover, as mentioned above, currently at the courts of China, the power of the patent for utility model is not weaker than the patent for invention. Further, even if it is then found during the examination process of the invention application that the technical solution actually does not have patentability, this fact does not have a retroactive force upon the executed court opinion or adjudication made by the courts in China based on the utility model, unless there is an evidence to show that the patentee has malicious behaviors or the doctrine of fairness will be violated if no retroaction is made.
 
3. Conditions for Applying the “Two Applications for an Identical Invention-creation” System

① Both an invention application and a utility model application may be filed for the subject matter for which protection is sought.

Since the range of subject matters eligible for patent protection by an invention is larger than that of a utility model, it is only necessary to determine whether the subject matter is eligible for protection by a utility model. As for the determination standards, please see the content concerning the subject matter of a utility model in the previous chapter.

② The invention application and the utility model application should include those claims having the same protection scope.

As mentioned above, the prerequisite for the “two applications for an identical invention-creation” system is that the applicant files both an invention application and a utility model application for the same invention-creation. Pursuant to the relevant provisions of the Guidelines for Patent Examination, the “same invention-creation” here means that there are the claims having the same protection scope. In other words, the “two applications for an identical invention-creation” system is applicable to those claims having the same protection scope in the utility model application and in the invention application, instead of the description. For example, if the description of a utility model application is completely the same as that of an invention application but all the claims in the two applications have different protection scopes, it is unnecessary to file two applications for an identical invention-creation. Of course, in order to avoid a conflicting application, the two applications should be filed on the same day. However, if the description of a utility model application is not completely the same as that of an invention application but all or some claims in the two applications have the same protection scope, the utility model application and the invention application should be simultaneously filed in accordance with the requirements of the “two applications for an identical invention-creation” system; otherwise the exception of the “two applications for an identical invention-creation” as prescribed by A9 of the Chinese Patent Law cannot be enjoyed.

Moreover, as for the “same protection scope”, none of the Chinese Patent Law, the Implementing Regulations of the Chinese Patent Law, and the Guidelines for Patent Examination provides explicit determination standards. If two claims are completely the same or only differ in the wording, they obviously have “the same protection scope”. However, for example, if an invention application and a utility model application for an identical invention-creation have exactly the same claims upon filing but during the subsequent examination process the applicant amends the claims of the invention application to overcome the defect of lacking clarity or lacking support from the description, do the two applications still have the same protection scope and thus still suffer from the defect of double patenting? Based on our experience, during the earlier patent examination in China, as long as not only the wording of the claims is amended by the applicant, the examiner would believe that the protection scope was no longer the same. However, judging from the Office Actions received from the SIPO in recent years, the situation has changed. If the amendment only aims to overcome the defect of lacking clarity in the claims, the examiner will still believe that the protection scope is the same. However, if the amendment changes a broad feature in a claim into a subordinate feature to overcome the defect of lacking support from the description, the examiner will no longer deem that the protection scope is the same.

On the other hand, if the subject matter of two claims is an image pickup apparatus and the two claims are completely the same except that one claim includes the feature “lens” while the other claim includes other features, will the two claims be considered as having the same protection scope? In our opinion, a person skilled in the art knows that the image pick apparatus certainly comprises a “lens” even if the claim does not have such a limitation, so the two claims should be considered as having the same protection scope. However, if one claim includes the “lens” while the other claim includes a “fixed focal-length lens”, the two claims will normally be considered as not having the same protection scope.

To sum up, in our opinion, in the patent examination practice in China, the “same protection scope” means “completely the same protection scope” and excludes the case where the protection scopes only partially overlap each other or the protection scope of one claim completely covers that of the other claim. However, to determine whether the protection scopes are completely the same is not to judge whether the wording of the two claims are completely the same but to make an overall judgment based on the other parts of the application document and the knowledge of a person skilled in the art.

③ The same applicant files an invention application and a utility model application on the same day (only refers to the actual filing date).

Please be especially noted that the “same day” here refers to the actual filing date in China. That is to say, even if an invention application and a utility model application claim the same priority, they should be filed on the same day in China. As mentioned above, this is mainly for the purpose of preventing the applicant from obtaining a term of protection exceeding twenty years.

Here a question will be involved. If the parent application (invention) goes through the “two applications for an identical invention-creation” procedure and the divisional application includes the same claims as the utility model application, can the “two applications for an identical invention-creation” system be still applicable to the divisional application? Although the Guidelines for Patent Examination does not specify this point, we think that the answer is yes, because the divisional application is entitled to the actual filing date of the parent application and should be deemed to be filed on the same day as the utility model application. However, the divisional application is filed as an independent application. Thus, in order to guarantee that the “two applications for an identical invention-creation” system is also applicable to the divisional application, the applicant has also to make a statement upon filing.

④ The applicant should separately make a statement upon filing the two applications

The statement is actually shown as below, as a part of the request upon filing an invention application or a utility model application, and the selection of the radio box on the left side means that a statement is made.



Please be noted that if no statement is made upon filing, the “two applications for an identical invention-creation” system cannot apply, that is, during the subsequent process, double patenting can be prevented only by amending the invention application, not by abandoning the patent for utility model.

⑤ The patent for invention can be obtained by abandoning the patent for utility model only when the previously obtained patent for utility model does not terminate.

As mentioned above, this provision is mainly for the purpose of preventing the technique that has entered the public field from being patented again. In accordance with this provision, the applicant has to maintain validity of the patent for utility model before the patent for invention is granted; otherwise not only the patent for utility model will be lost but also the patent for invention for the same invention-creation cannot be obtained.
 
4. Measures for Filing “Two applications for an Identical Invention-creation”

The applicant can adopt two measures to file “two applications for an identical invention-creation”—one is to directly file an invention application and a utility model application on the same day in China, and the other is to first file an earlier application in another country and then claim priority of the earlier application in accordance with the Paris Convention to file an invention application and a utility model application on the same day in China.

In other words, the applicant cannot use the Patent Cooperation Treaty. For PCT applications, the applicant probably can adopt the following two measures:

(1)



To first file a PCT application and to then simultaneously designate an invention application and a utility model application when entering the Chinese national phase.

(2)



To first file a PCT application and an invention/utility model application on the same day in China and to then designate a type of application different from the previously filed application when the PCT application enters the Chinese national phase so as to generate an invention application and a utility model application.

First, with regard to (1), only one of the “invention application” and “utility model application” can be selected when the PCT application enters the Chinese national phase, and not the two types can be simultaneously designated, so this measure actually does not work.

Second, with regard to (2), when a PCT application is filed, no actual application is generated in China and whether this application is an invention application or a utility model application cannot be determined; moreover, no statement can be made upon filing the PCT application; thus, the requirement of filing an invention application and a utility model application on the same day cannot be met, and the “two applications for an identical invention-creation” system cannot apply.
 
5. Typical Examples

According to the examination result of the following invention application, “two applications for an identical invention-creation” will have the following two situations:

(1) During the examination process of the invention application, amendments are made and there no longer exist the claims having the same protection scope, so there is no need to abandon the patent for utility model, and the patent for utility model and the patent for invention can both exist.

(2) During the examination process of the invention application, no amendment is made or the claims having the same protection scope still exist even if the amendments are made, and the examiner will require the applicant to make a choice before granting a patent for invention so as to prevent double patenting. After the applicant abandons the patent for utility model, the patent for utility model terminate from the announcement date of the patent for invention, so as to realize the seamless transition between the patent for utility model and the patent for invention.
 
III. How to Amend a Utility Model

1. Timing for Making Amendments

The amendments to a utility model are limited to the preliminary examination phase, the reexamination phase and the invalidation phase, and no amendment is allowed during the litigation phase.

(1) Preliminary Examination Phase

In the preliminary examination phase, the applicant can make amendments either when making voluntary rectifications or after receiving a Notification to Make Rectification or an Office Action.

Voluntary rectification

Pursuant to Rule 51 of the Implementing Regulations of the Chinese Patent Law, the applicant may voluntarily amend the application document of the utility model application within two months from the date of filing. Where the applicant voluntarily submits the amendment paper after the time limit of two months expires and the amendment paper eliminates the defects existing in the original application document and has the prospect of patentability, this amendment paper is acceptable.

An international application that applies for patent for utility model can be amended in accordance with A28 or 41 of the Patent Cooperation Treaty when it enters the Chinese national phase; before the preparations for the publication of the utility model application are made, the translation errors can be corrected in accordance with A113 of the Chinese Patent Law.

Amendments after receiving a Notification to Make Rectification or an Office Action

Amendments after receiving a Notification to Make Rectification

After receiving a Notification to Make Rectification, the applicant normally has two opportunities to make amendments.

If the application document of the patent application has the defects that can be overcome through rectifications, the examiner issues a Notification to Make Rectification, and at this time, the applicant has the first chance to make amendments. After the applicant makes rectifications, if the application document still suffers from some defects, the examiner will normally issue another Notification to Make Rectification, and at this time, the applicant has the second chance to make amendments. If two Notifications to Make Rectifications have been issued for the defects that can be overcome through rectifications and the defects are still not eliminated after the applicant makes observations or rectifications within the specified time limit, the examiner may issue a Decision of Rejection.

It is suggested to make amendments based on the examiner’s opinions when responding to the second Notification to Make Rectification and to preferably discuss with the examiner on the phone before submitting the response so as to prevent the rejection of the application.

Amendments after receiving an Office Action

If the examiner believes that the application document has obvious substantive defects that cannot be eliminated through rectifications, the examiner will issue an Office Action, and at this time, the applicant has the first chance to make amendments.

If the applicant does not submit convincing observations and/or evidence or make amendments to overcome the defects pointed out in the Office Action within the specified time limit in response to the Office Action, the examiner may issue a Decision of Rejection. For example, the applicant merely corrects the wrongly written characters or changes the way of expression.

Where the amendments are made in answer to the defects pointed out in the Office Action, even if the mentioned defects still exist, the examiner shall still give the applicant another opportunity to make observations and/or amendments, and at this time the applicant has the second chance to make amendments.

If the further amendments relate to the same kind of defect and the amended application document still suffers from the defects that have been notified to the applicant, the examiner may issue a Decision of Rejection.

(2) Reexamination Phase

In the reexamination phase, the applicant may make amendments under the following four circumstances.

Upon filing a request for reexamination

If the petitioner files a request for reexamination within three months from the date of receipt of the Decision of Rejection, the petitioner may amend the application document.

When responding to a Notification of Reexamination

If the petitioner makes a written response in answer to the defects pointed out by a Notification of Reexamination issued by the collegial panel within one month from the date of receipt of this notification, the petitioner may amend the application document.

When responding to a Notification for Oral Proceedings for Request for Reexamination

If the petitioner makes a written response in answer to the defects pointed out by a Notification for Oral Proceedings for Request for Reexamination within one month from the date of receipt of this notification, the petitioner may amend the application document.

When participating in the oral proceedings, the petitioner may amend the application document.

(3) Invalidation Phase

In the invalidation phase, the patentee may make amendments under the following four circumstances.

Invalidation request

The applicant may amend the claims within one month from the date of receipt of the invalidation request.

Additional invalidation causes or evidence raised by the requester

The patentee may make amendments in response to the additional invalidation causes raised by the requester within one month from the date of filing of an invalidation request.

The patentee may make amendments when the requester raises additional invalidation causes after the invalidation request is filed under the following circumstances: (i) for claims amended by way of combination by the patentee, addition of invalidation causes is made within the time limit specified by the Board, and the added causes are explained concretely within the time limit; or (ii) the addition is to change the invalidation causes which are obviously inappropriate to the evidence submitted.

The patentee may make amendments in response to the additional evidence presented by the requester within one month from the date of filing of an invalidation request.

The patentee may make amendments when the requester presents additional evidence after the invalidation request is filed under the following circumstances: (i) for claims amended by way of combination or counterevidence presented by the patentee, the requester presents additional evidence within the time limit specified by the Board, and explain the relevant causes concretely with reference to the additional evidence within this period; (ii) by the closure of oral proceedings, the requester presents such evidence of common knowledge in the skilled art or such complementary evidence for meeting the legal requirement for evidence (including the Chinese translation of the submitted foreign evidence), and explain the relevant causes concretely with reference to the additional evidence within the period.

If the Board introduces invalidation causes or evidence not mentioned by the requester, the patentee may amend the claims.

Before the Board makes an examination decision, the patentee may cancel some claims or delete some technical solutions included in the claims.
 
2. Principles for Making Amendments

The amendments made in all the phases should comply with A33 of the Chinese Patent Law. Moreover, the amendments in the preliminary examination phase should comply with R51.3 of the Implementing Regulations of the Chinese Patent Law, R43.1 of the Implementing Regulations of the Chinese Patent Law, A31.1 of the Chinese Patent Law and R40 of the Implementing Regulations of the Chinese Patent Law. The amendments in the reexamination phase should comply with R61.1 of the Implementing Regulations of the Chinese Patent Law, and the amendments in the invalidation phase should comply with R69 of the Implementing Regulations of the Chinese Patent Law.

(1) General Principles

Any amendment to the application document in the preliminary examination phase, the reexamination phase, and the invalidation phase should not go beyond the scope of the disclosure contained in the original description and claims, that is, all the amendments should comply with A33 of the Chinese Patent Law. This is basically equivalent to the determination standard for an invention for the defect of going beyond the scope of the original disclosure.

The deletion of a feature that violates the provision on the subject matter of a utility model according to the examiner’s opinion is generally considered as not going beyond the scope of the disclosure contained in the original description and claims. For example, the applicant is allowed to delete a material feature of a component, which relates to a new material and is not an innovative characteristic of the utility model, from a claim, even if the original description and claims disclose that the component is defined by this material feature.

If the Office Action points out the defect of going beyond the scope of the original disclosure and the applicant does not amend the application document but merely makes an argument which is unacceptable, the examiner may issue a Decision of Reexamination. Thus, the applicant should treat such a kind of Office Action carefully and should try not to respond only by making an argument unless the fact judged by the examiner is wrong or the argument is told in advance to the examiner and the examiner agrees to it.

If the first two Office Actions point out the defect of “going beyond the scope of the original disclosure” while the third Office Action points out that a different feature goes beyond the scope of the original disclosure, the examiner may still issue a Decision of Rejection on the grounds that the present application violates A33 of the Chinese Patent Law. That is to say, the applicant normally only has two chances to make amendments in answer to the defect of going beyond the scope of the original disclosure.

(2) Preliminary Examination Phase

Compliance with R51.3 of the Implementing Regulations of the Chinese Patent Law

In the preliminary examination phase, the amendments made by the applicant should comply with R51.3 of the Implementing Regulations of the Chinese Patent Law, i.e., “where the applicant amends the application after receiving the notification of opinions of the examination as to substance of the patent administration department under the State Council, he or it shall make the amendment directed to the defects pointed out by the notification.”

For the amendment paper that includes the amendments not made in answer to the defects pointed out by the Office Action, if the amendments comply with A33 of the Chinese Patent Law, eliminate the defects existing in the original application document and have the prospect of patent protection, such amendments may be considered as the amendments made in answer to the defects pointed out by the Office Action, and the amended application document shall be accepted. If this provision is not met, the examiner can issue an Office Action to require the applicant to submit the amendment paper that complies with the provision within the specified time limit. If the re-submitted amendment paper still does not comply with the provision, the examiner will continue to examine the document prior to the amendments, for example, to issue a Decision to Grant Patent Right or a Decision of Rejection.

Compliance with R43.1 of the Implementing Regulations of the Chinese Patent Law

In the preliminary examination phase, the amendments made by the applicant should comply with R43.1 of the Implementing Regulations of the Chinese Patent Law, “a divisional application filed shall be entitled to the filing date and, if priority is claimed, the priority date of the initial application, provided that the divisional application does not go beyond the scope of the disclosure contained in the initial application.”

Compliance with A31.1 of the Chinese Patent Law

In the preliminary examination phase, if there is no unity between the added independent claim and the original claim, the defect of lacking unity will be pointed out, and the applicant can make either of the following options: retaining the original claim and canceling the added independent claim, or retaining the added independent claim and canceling the original claim.

If the technical solution of the added independent claim does not appear in the original claims but the original description explicitly discloses this technical solution and there is unity between this independent claim and the original claim, the added independent claim will be allowed. For example, if claim 1 claims a plug having a feature A and the added claim 2 claims a socket having a feature corresponding to A, claim 2 will be allowed. Unlike the utility model, the substantive examination for an invention does not allow such an amendment.

Compliance with R40 of the Implementing Regulations of the Chinese Patent Law

In the preliminary examination phase, the amendments should comply with R40 of the Implementing Regulations of the Chinese Patent Law, that is, “Where the description states that it contains explanatory notes to the drawings but the drawings or part of them are missing, the applicant shall, within the time limit specified by the patent administration department under the State Council, either furnish the drawings or make a declaration for the deletion of the explanatory notes to the drawings. If the drawings are submitted later, the date of their delivery at, or mailing to, the patent administration department under the State Council shall be the date of filing of the application; if the explanatory notes to the drawings are to be deleted, the initial date of filing shall be retrained.”

If the original drawings are unclear or incomplete and the applicant submits clear drawings which go beyond the scope of the original disclosure, it is disallowed to add the drawings by determining the filing date; instead, the examination is conducted in accordance with A33 of the Chinese Patent Law.

The later submission that does not affect the filing date includes: adding a drawing about the background art; adding a partially enlarged drawing and explanatory notes when the text is clear; replacing a non-standard drawing with a mechanical drawing.

(3) Reexamination Phase

Compliance with R61.1 of the Implementing Regulations of the Chinese Patent Law

In the reexamination phase, the amendments should comply with R61.1 of the Implementing Regulations of the Chinese Patent Law, that is, “the amendments shall be limited only to remove the defects pointed out in the Decision of Rejection of the application or in the Notification of Reexamination”.
The above requirement is not considered to be met in the following cases: (i) where a claim amended extend the extent of protection as compared with the claim rejected in the Decision of Rejection; (ii) where a claim in the amendment is derived from the technical solution that lacks unity with the claims rejected in the Decision of Rejection; (iii) where the type of a claim is altered, or the number of claims is increased; or (iv) where the amendments are directed to the claims or the description that were not involved in the decision of rejection, unless they are intended merely to correct obvious clerical errors or to amend the defects of the same nature with that indicated in the Decision of Rejection.

The collegial panel normally does not accept the amendment that is not made in accordance with this provision and will examine the previously acceptable text.

If a part of the content of the amended document complies with this provision, the collegial panel may provide examination opinions on this part, and notify the petitioner that he should amend the other part of the text which violates this provision and submit a document which complies with this provision; otherwise the collegial panel will take the previously acceptable text as the basis of examination.

(4) Invalidation Phase

Compliance with R69 of the Implementing Regulations of the Chinese Patent Law

During the examination process of an invalidation request, the patentee of a utility model may amend the claims but shall not broaden the protection scope of the original patent, and shall not amend the description and drawings.

The amendments shall be limited to the claims only and shall follow the following principles: (i) the title of the subject matter of a claim can not be changed; (ii) the extent of protection cannot be extended as compared with that in the granted patent; (iii) the amendment shall not go beyond the scope of disclosure contained in the original description and claims; and (iv) addition of technical features not included in the claims as granted is generally not allowed.
 
3. How to Make Amendments

(1) Preliminary Examination Phase

In the preliminary examination phase, the applicant may amend the application document (claims, description, drawings, Abstract, drawing of the Abstract) of a utility model by deletion, addition or correction, and the amendments are limited by A33 of the Chinese Patent Law, R51.3 of the Implementing Regulations of the Chinese Patent Law and R43.1 of the Implementing Regulations of the Chinese Patent Law.

(2) Reexamination Phase

In the reexamination phase, the petitioner may amend the application document (claims, description, drawings, Abstract, drawing of the Abstract) of a utility model by deletion, addition or correction, and the amendments are limited by A33 of the Chinese Patent Law and R61.1 of the Implementing Regulations of the Chinese Patent Law.

(3) Invalidation Phase

In the invalidation phase, when the amendment principles are met, the claims may be amended by cancelling claims, incorporating one claim into another claim, and deleting technical solutions. The cancellation of the claims means canceling one or several claims. The incorporation of the claims means the incorporation of two or more claims that do not have a dependence relationship and are dependent on the same independent claim in the granted patent. When an independent claim is not amended, it is not allowed to incorporate or amend its dependent claims. The deletion of technical solutions means deleting one or more technical solutions from two or more parallel technical solutions in the same claim.

In the invalidation examination practice, the Board strictly requires the claim amendments to be limited to the three kinds of amendments, that is, “cancellation or incorporation of the claims and deletion of technical solutions”, and the applicant cannot amend the claims in other manners. However, in a patent invalidation administrative dispute case ((2011) No. 17 Administrative Judgment of the Intellectual Property Tribunal)for an invention titled “Compound Preparation of Amlodipine and Irbesartan” owned by the Simcere Pharmaceutical Group, the Supreme People’s Court rules that in the patent invalidation procedure the claim amendments are normally limited to the cancellation or incorporation of the claims and deletion of the technical solutions when meeting the amendment principles, but the other amending ways are not absolutely excluded.
 
IV. How to Deal with Invalidation of a Utility Model

In the invalidation procedure, the differences between a utility model and an invention are only reflected in the subject matter and the inventive step assessment standard, and the other invalidation provisions, the form of invalidation evidence, the basic procedures for invalidation, and the requirements on oral proceedings, etc. are basically the same.

1. Subject Matter

Compared with an invention, invalidation causes for a utility model are more related to the subject matter.

Since the preliminary examination examines the subject matter very strictly, there is a low possibility for the granted patent for utility model to be invalidated on the grounds that it relates to a subject matter excluded from protection by a utility model. Even if the claims include the non-shape, non-structure features, the patent for utility model may still remain valid. We list some cases in the following paragraphs.

Invalidation Decision WX17884 issued on December 28, 2011

The claims of the utility model commented by this Decision are as follows:

“1. A button switch welded to a circuit board to provide an electronic switching function and comprising an insulating body, a first terminal group, a second terminal group and at least one conducting slab, characterized in that: …; the first terminal group and the second terminal group are integrally formed with the insulating body by insert molding, the conducting slab is housed inside a recess of the insulating body to provide the electronic switching function; a partial area of the conducting slab keeps contacting a first contact portion of the first terminal group.

3. The button switch according to claim 1, wherein the first terminal group and the second terminal group are made of a sheet-like metal by punching.

11. The button switch according to claim 9, wherein the top of the button switch is used for pushing so as to contact a second contact portion of the terminal body of the second terminal group under the external force …”

In the requester’s opinion, “insert molding” in amended claim 1, “made of a sheet-like metal by punching” and “to contact a second contact portion of the terminal body of the second terminal group under the external force” in claim 11 are all process steps excluded from protection by a utility model, thereby violating R2.2 of the previous Implementing Regulations of the Chinese Patent Law (A2.3 of the Chinese Patent Law).

However, in the collegial panel’s opinion, all the claims of the patent concerned request to protect a button switch and disclose the shape and structure of the button switch, so these claims relate to subject matters eligible for protection by a utility model and comply with R2.2 of the previous Implementing Regulations of the Chinese Patent Law; although claims 1, 3 and 11 also contain non-shape, non-structure features, these features will not cause the claims to be excluded from patent protection by a utility model; only the change of the shape, structure or their combination of the product caused by these non-shape, non-structure features, instead of these features per se, will be taken into account in the inventive step assessment; for the patent for utility model, those technical features that will not cause the shape, structure or their combination of the product to change in the technical solution will not be taken into account in the inventive step assessment.

As shown from this case, the Board determines whether an apparatus claim is eligible for protection by a utility model mainly based on the existing shape and structural features in this claim and probably will not take into account certain individual non-shape, non-structure features in this claim.

However, please be noted that if the characterizing portion of a claim of a utility model contains only method features, the Board will probably believe that the improvement of the solution of this claim lies in the method and thus conclude that this claim is excluded from protection. For example, please see the following case.

Invalidation Decision WX13386 issued on May 12, 2009.

Claim 1 of the utility model commented by this Decision is as below:

“1. A split-type cascade ring filler comprising a cylinder (3) and upper and lower cross frames (2, 7), the upper portion of the cylinder (3) being trumpet-shaped and the lower portion thereof being column-like, four uniformly distributed apertures (6) being provided on the upper end of the column-like cylinder (5), two staggered upper and lower cross frames (2, 7) being provided inside the cylinder (3), characterized in that the trumpet-shaped cylinder (4) and the upper cross frame (2) form one part, and the column-like cylinder (5) and the lower cross frame (7) form the other part, with an adhesive layer (1) provided at a position where the two parts are combined with and connected to each other; or the trumpet-shaped cylinder (5) and the column-like cylinder (5) form one part, and the upper and lower cross frames (2, 7) form the other part, with an adhesive layer (1) provided at a position where the two parts are combined with and connected to each other.”

The Board believes that the characterizing portion is a technical solution proposed for a method for manufacturing the split-type cascade ring filler. Although the patentee asserts that the adhesive layer is a structural feature, claim 1 includes a technical solution proposed for the method for manufacturing the split-type cascade ring filler and the patentee has no evidence to prove or fully explain that the characterizing portion of claim 1 defines the shape and structure of the product with the name of the known method in the prior art, so claim 1 does not relate to a subject matter eligible for protection by a utility model and violates R2.2 of the Implementing Regulations of the Chinese Patent Law.

With regard to this invalidation decision, the Beijing No. 1 Intermediate People’s Court ((2009) No. 2082 First-Instance Administrative Judgment of the No. 1 Intermediate People’s Court) holds a different opinion. The court believes that the two technical solutions disclosed in the characterizing portion are not a description of the steps for forming the shape and structural features disclosed by the title of the subject matter and the preamble portion but are a definition of the structure of the cascade ring filler, that is, a definition of a structure in which the cascade ring filler comprises two parts and an intermediate adhesive layer. Finally, the Beijing Higher People’s Court ((2010) No. 214 Final Administrative Judgment of the Higher People’s Court) supports the court opinion of the first-instance court.
 
2. Inventive Step

During the inventive step assessment, the standard for a utility model is lower than that for an invention, and such a difference is mainly shown in the field of the prior art and the number of the prior art references. The following paragraphs will use some invalidation cases to explain the aforementioned inventive step standard for a utility model.

(1) Determination of the technical field

Invalidation Decision WX13549 issued on June 18, 2009

Claim 1 of the utility model commented by this Decision is as below:

“1. A magnetic pressure leak stopper, comprising a shell and a magnet provided inside the shell, characterized in that …”

The requester provides the following two evidences to deny the inventiveness of claim 1 of the target patent:

Evidence 1: the description of a Chinese patent for utility model, Patent No. 93225854.9, Announcement Date: April 13, 1994, Title: “Permanent Magnetic Lifter”, 12 pages (hereinafter referred to as D1);

Evidence 2: the description of a Chinese patent for utility model, Patent No. 90222661.4, Announcement Date: May 1, 1991, Title “Permanent Magnetic Lifter”, 16 pages (hereinafter referred to as D2).

In the collegial panel’s opinion, the technical field of the target patent relates to a leak stopper field, whereas the technical field of D1 and D2 relates to a permanent magnetic lifter, that is, the two belong to different technical fields; moreover, D1 and D2 do not explicitly disclose that a permanent magnetic lifter can be applied to the leak stopper; pursuant to the Guidelines for Patent Examination, Part IV, chapter 6, section 4, D1 and D2 cannot be used separately or in combination to assess the inventive step of claim 1 of the target patent.

In the Summary of the Decision, the collegial panel believes that “for a patent for utility model, the emphasis is normally to consider the technical field to which the utility model belongs; since the reference documents provided by the requester as evidences belong to a technical field different from that of the target patent and do not give a clear technical teaching, the reference documents cannot be used to assess the inventive step of the target patent.”

Judging from this case, the Board determines whether two prior art references can be combined based on the following two standards: whether the field of the two prior art references are close to each other, and whether the two prior art references have given a clear technical teaching. If Evidence 2 clearly mentions that the permanent magnetic lifter can be applied to the leak stopper, even if Evidence 1 and Evidence 2 belong to different technical fields, Evidence 1 can still be combined with Evidence 2.

As to whether the fields are close to each other, the court usually holds the same opinion as the Board, but sometimes their opinions also differ.

For example, in the No. 14353 Invalidation Decision issued on August 24, 2009, the Board rules that both claim 1 of the target patent and Attachment 1 belong to the field of a large apparatus support member/column and thus assesses the inventive step of claim 1 based on Attachment 1. With regard to this Decision, the No. 1 Intermediate People’s Court ((2010) No. 1376 First-Instance Administrative Judgment of the Intellectual Property Tribunal of the No. 1 Intermediate People’s Court) states that “According to the international patent classification, the target patent and Attachment 1 obviously belong to different technical fields. The target patent differs prominently from Attachment 1 in the technical problem, the technical object and the technical effect, and it is difficult for a person skilled in the art to get a technical teaching from Attachment 1. The Board’s opinion that Attachment 1 belongs to an approximate or relevant technical field lacks the support of facts and a legal basis, and should be corrected.” The Beijing Higher People’s Court ((2010) No. 1235 Final Administrative Judgment of the Higher People’s Court) supports the court opinion of the No. 1 Intermediate People’s Court.

As shown from this case, the determination of whether the two fields are close is mainly based on whether the target patent and the evidence differ a lot in the technical problem, object and effect, with reference to the difference in the international patent classification of the target patent and the evidence.

(2) The number of prior art references to be combined

Invalidation Decision WX18488 issued on April 19, 2012

The claims of the target utility model are as follows:

“1. A rotating-anode electrostatic precipitator, comprising: a rotating-anode device, a cathode line, and a rotating steel brush dust removing mechanism mounted inside a non-dust collection area; the rotating-anode device includes a driving roller, a driven roller, a driving chain wheel connecting the driving roller to the driven roller, a driving chain, an anode panel connected to the driving chain; a heteropolar distance between the anode panel and the cathode line is 200 mm or 230 mm or 260 mm; the driven roller has a free hanging structure to guarantee self-aligning of the driven roller and tensioning of the driving chain; the rotating steel brush dust removing mechanism includes at least one pair of reversely-rotating dust-removing brush components, and a center distance between each pair of the reversely-rotating dust-removing brush components is continuously adjustable; both ends of the dust-removing brush components are provided with a movable sealing device.

2. ….

6. ….”

In the Board’s opinion, claims 1-6 are only a simple aggregation of a plurality of evidences and common knowledge, without achieving any unexpected technical effect, so claims 1-6 do not possess inventiveness. The following are the detailed comments:
 

Wherein

D1 Evidence 1: the description of a Chinese invention application with Application No. 200610006008.4;

D4 Evidence 4：Recent Application and Reliability Improvement of Moving Electrode Type Electrostatic Precipitator, A Collection of Theses at the 11th National Academic Conference on Electrostatic Precipitation;

D5 Evidence 5: Type Selection, Installation, Operation and Management of Electrostatic Precipitators, Edited by Li Zaishi, China Electric Power Press, first printed in June 2005, 3 pages, (copyright page, and pages 161, 163);

D9 Evidence 9: Modern Flue Gas Dust Removal Technology, Edited by Qi Juntian, Tang Xiaoqing and Zhang Bingwei, Chemical Industry Press, 1st printing of Edition 1 in April 2008, 2 pages (copyright page, and page 115);

D10 Evidence 10: Mechanical Design Manual, Edition 5, Volume 2, Edited by Cheng Daxian, Chemical Industry Press, 28th Printing of Edition 5 in April 2008, 3 pages (copyright page, pages 8-155, 8-156);

D11 Evidence 11: a Japanese utility model application with Publication No. H4-33946 and published on March 19, 1992, 5 pages (bibliography data page, pages 6-7 of the description, pages 1-2 of the drawings), and 2 pages of the Chinese translation of a part of this application.

In the Summary of the Decision, the Board points out that “if the technical solution of a claim of a utility model is only a simple aggregation of prior art references and there is no functional association between respective technical features and the aggregated technical solution does not produce any unexpected technical effect, this claim will not have prominent features or represent progress, and thus does not involve an inventive step as prescribed by A22.3 of the Chinese Patent Law.”

In this case, (judging from the Decision), it seems that the patentee does not make a refutation on whether the solution of the target patent is a simple aggregation of a plurality of prior art references and whether the aggregation produces an unexpected technical effect; instead, the patentee emphasizes that some specific features of the claims are not disclosed by the corresponding prior art references. The Board believes that there is no functional association between the features of the specific components of the “rotating-anode electrostatic precipitator”, and by referring to the determination standard for “invention by combination”, the Board states that the combination of these features does not produce any unexpected technical effect, thereby concluding that the claims do not involve an inventive step over a combination of a plurality of prior art references. In the inventive step assessment, the number of prior art references cited by the Board largely exceeds two in the normal case.

Judging from this case, whether a claim of a utility model is a simple aggregation of a plurality of prior art references and whether it produces any unexpected technical effect will determine whether a combination of the plurality of prior art references can be used to assess the inventive step of the claim, and the plurality of prior art references are not limited by the specific number. Thus, when determining whether each feature of a claim of a utility model is separately disclosed by the prior art references, the invalidation requester or patentee has to make a necessary explanation of whether the claim is a simple aggregation of a plurality of technical features. If the description of the utility model has clearly described the functional association between a plurality of features in the claim or that this claim is not a simple aggregation or produces an unexpected technical effect, the patentee will be in an advantageous defending position when arguing that the claim is not a simple aggregation.

With regard to a simple aggregation of prior art references in the inventive assessment of the utility model, the court usually agrees with the Board, but sometimes they may also have opposite opinions.

For example, in the (2010) No. 407 Final Administrative Judgment of the Higher People’s Court, the Board believes that it is not allowed to use three reference documents and two items of common knowledge to assess the inventive step of the utility model, but the Beijing Higher People’s Court uses a combination of five prior art references to assess the inventive step of claim 1.

Here is another example. In the (2010) No. 686 Final Administrative Judgment of the Higher People’s Court, the Beijing Higher People’s Court believes that the use of five prior art references by the Board in the inventive step assessment to invalidate the target patent is too strict and violates the basic principles of the inventive step assessment of utility model as prescribed by the Guidelines for Patent Examination.

(3) Non-shape, non-structure features

As shown from the above-mentioned Invalidation Decision WX17884, some non-shape, non-structure features in a claim of a patent for utility model will probably not be taken into consideration during the determination of the subject matter in the invalidation phase. However, during the novelty or inventive step assessment in the invalidation phase, whether these features will affect the shape, structure, or their combination of the product will still be considered.
 
V. How to Understand and Utilize the Patent Evaluation Report for Utility Model

1. Relevant Laws and Regulations

In accordance with the Several Provisions of the Supreme People’s Court on Questions Concerning the Application of Law to Pre-litigation Injunctions to Cease Patent Infringement Activities promulgated in June, 2001, if the application for a pre-litigation injunction against the respondent to cease his patent infringement concerns a utility model, the applicant shall submit the search report (patent search report for utility model) issued by the State Council’s patent administration authority.

In accordance with R61.2 of the Chinese Patent Law that entered into force on October 1, 2009, where the patent infringement dispute involves a patent for utility model or a patent for design, the people’s court or the patent administration department may require the patentee or the interested party to furnish a patent evaluation report issued by the SIPO.
 
2. Comparison between Two Reports

The following table compares the patent search report for utility model and the patent evaluation report for utility model:
 

As shown above, the patent search report for utility model mainly assesses the novelty or inventive step based on the search. Compared with the patent search report for utility model, the patent evaluation report for utility model comments most of the invalidation provisions involving the utility model, except A20.1 (confidential examination before filing of an application). From this perspective, the patent evaluation report for utility model is a report similar to the Office Action issued during the substantive examination for an invention.
 
3. Role of the Report

The conclusion of the patent search report for utility model or the patent evaluation report for utility model cannot affect the decision of the Board in the invalidation procedure. The patent search report for utility model or the patent evaluation report for utility model is the preliminary evidence for the people’s court to judge the patent infringement case or for the patent administration department to deal with the patent infringement dispute for utility model, and mainly plays the role of helping the court or authority concerned to assess the stability of the patent right so as to determine whether to terminate the relevant procedure based on the invalidation request raised by the accused infringer. Please be noted that the patent search report for utility model or the patent evaluation report for utility model is not an important document for the plaintiff to file a patent infringement litigation for utility model, and the people’s court “may” but not “must” require the patentee or the interested party to furnish the patent search report for utility model or the patent evaluation report for utility model. For example, in (2011) Hainan No. 17 Final Civil Judgment of the No. 3 Tribunal, the plaintiff that filed a patent infringement litigation for utility model did not furnish a corresponding patent search report for utility model.

From the perspective of the patentee, the patent evaluation report for utility model can help the patentee to correctly understand the legal strength of his or its patent for utility model and thereby avoid unnecessary enforcement of his patent for utility model which has no legal value so as not to damage his own interests. From the perspective of the public, the patent evaluation report for utility model can help the other entities or individuals to correctly understand the legal strength of the patent for utility model concerned and avoid doing valueless dealings such as transferring the patent, signing a patent licensing contract or investing with the patent.
 
4. Noticeable Issues in Making Use of the Report

The requester of the patent evaluation report for utility model must be the patentee or the interested party. The interested party refers to the person who, according to A60 of the Chinese Patent Law, has the right to file a lawsuit before the People’s Court or requests the administrative authority for patent affairs to handle the matter, such as a licensee of an exclusive patent licensing contract or a licensee of an ordinary patent licensing contract who has been authorized the right of action by the patentee. Where the patent for utility model is owned by several patentees, the requester may be some of the patentees.

Pursuant to R57 of the Implementing Regulations of the Chinese Patent Law, the patent administration department under the State Council shall make the patent evaluation report within two months from receiving of the request for the patent evaluation report; where two or more persons request for the patent evaluation report in respect of a same patent for utility model, the patent administration department under the State Council shall make one patent evaluation report only. Any entity or individual may view or copy the patent evaluation report.

Considering that the patent evaluation report for utility model may draw a conclusion that the utility model is legally uncertain and that this conclusion can be known to any entity or individual, it is suggested to think carefully before requesting the SIPO to issue a patent evaluation report for utility model. Before requesting the SIPO to make a patent evaluation report, the patentee or interested party may in advance made a “pre-evaluation report”, i.e., pre-evaluating the legal certainty of the patent for utility model based on the requirements of the patent evaluation report for utility model and then deciding whether to request the SIPO to make a patent evaluation report based on the result of the “pre-evaluation report”.
 
Conclusion

This article has answered some questions based on the status quo of the utility models in China, but these answers may be changed as the time passes, because China’s utility model system is still in an active phase. For example, the preliminary examination requirements for a utility model keep changing. This requires the applicant or patentee to always pay attention to the changes of China’s utility model system and to timely adjust the working manner during the drafting, application, and invalidation phases of the utility models based on the feedback.
 

（2012）