Benefits Of Filing A Utility Model And An Invention Patent In China At The Same Time

Many foreign applicants overlook the utility model, but it can be used strategically to improve the protection of your products in China.

An innovation patent has the following advantages:

1. it lasts for 20 years from the date of filing, and
2. it is a more stable right because it is substantively evaluated.

However, the examination process takes a lengthy time. The average time it takes for an invention patent to be granted is 2-4 years following filing.

A utility model is only valid for ten years from the date of application and is considered to have less ingenuity than an invention patent. However, because there is no substantive examination, it can be obtained rapidly, usually within a year of filing. This can be advantageous in the time-sensitive commercial sector.

In terms of enforceability, the invention patent is stronger than the utility model because it has been thoroughly reviewed, and it can usually result in higher damages. However, because the utility model is quick and easy to obtain, it may be preferable if the applicant needs protection in China sooner.

As a result, it’s a good idea to file for both an invention and a utility model in China for the applicant’s main items. In this approach, the applicant can get early protection for its product through a utility model, which is normally granted within a year of filing, and then get even better protection later when the inventive patent is granted. This prevents the applicant from having to wait for the invention patent to be granted before taking legal action against suspected infringers. Another advantage is that the applicant still has some protection under the utility model if the invention patent is refused following substantive review. Because the utility model patent requires less ingenuity than the invention patent, it is feasible that the utility model patent will remain stable even if the innovation patent is refused.

In terms of method, the applicant must file for both an invention and a utility model patent on the same day, as required by Chinese Patent Law. To avoid double patenting, the applicant should abandon one right, usually, the utility model, if both the invention and utility model is granted. Because international applicants are more likely to file a patent application in their home country first and then enter China via the Paris Convention or the PCT, the following procedure should be followed.

1. If the patent is to be entered into China under the Paris Convention, the foreign applicant can file both the utility model and the invention in China on the same date, claiming priority from the original US or EP patent application, within the priority period.
2. If the patent is to be entered into China under the PCT, the benefit of filing both a utility model and an invention patent at the same time is currently unavailable. In other words, such a strategy does not apply to PCT patent applications that have reached the national phase in China.

Finally, a utility model patent can only be awarded for products that have a defined shape or structure, hence it is generally applicable to mechanical product patents but not to chemistry or method patents.