Discussion on the Improvement of China's Utility Model Patent System

Yao Wenjie,[Patent]

 

Since the implementation of China's first Patent Law in 1985, utility models, as one of the three inventions and creations, have been widely used in China's patent practice, and have played a significant role in promoting China's technological innovation. With the introduction of "Mass Entrepreneurship and Innovation" and the launch of the Sci-Tech innovation board, Chinese people's enthusiasm for technological innovation is unprecedentedly high, and their technological innovation capabilities continue to increase. Correspondingly, China's current number of patent applications has leapt to the first place in the world, becoming a veritable patent giant, and is striding forward to a patent power.
On the occasion of the fourth revision of the Patent Law of China, the author made specific suggestions on the improvement of China's utility model patent system through a comparative analysis of the Chinese and German utility model patent systems, in order to better adapt China's patent system to national conditions and give full play to more enormous institutional advantages.
 
Status Quo and Predicaments of China's Utility Model Protection
(1) Utility model authorization conditions and examination system
Article 2 of the Patent Law stipulates the object of protection of utility models: The term "utility model" refers to any new technical solution relating to a product's shape, structure, or a combination thereof, which is fit for practical use. At the same time, Article 22 of the Patent Law stipulates the authorization conditions for utility models: An invention or utility model for which a patent is to be granted shall be novel, inventive and practically applicable.
In specific examination practice, China adopts a preliminary examination system for utility models, that is, formal examination and examination of obvious substantive defects of application documents. The examination of obvious substantive defects includes an examination of apparent novelty but does not include the examination of inventive step. That is to say, although the utility model for which the patent right is granted requires inventiveness, there is no examination of it when the utility model is granted.
 
(2) The role of the utility model patent system in the industry
Compared with invention patents, the inventive height of utility models is relatively low, which can encourage enterprises to continuously develop some practical "small inventions", thereby accumulating industry progress. Because of its little inventiveness and fast examination process, utility models can more easily meet the rapid development needs and rights protection needs of some companies. In practice, utility models are often used as supplementary protection for invention patents. They are filed on the same day as the invention, which is the so-called "one invention, one utility model" application and the utility model can be authorized first. In the case that the invention patent application has the prospect of a grant, the applicant can again give up the utility model to obtain the grant of the invention patent. The supplementary role of utility models can effectively solve the problem of temporary protection of invention patent applications from the disclosure to the authorization period and plays a vital role in practice. In some countries that protect utility model rights, such as Germany, utility model patents are also widely used mainly because of the above advantages. It is foreseeable that the utility model patent system will continue to play an important role for a long time in the future in order to maintain the activeness of China's economic innovation.
 
(3) Current status and problems of utility model protection
From 2009 to 2018, the number of utility model applications in China rose from 300,000 to 2 million per year, and the number of utility model grants rose from 200,000 to 1.54 million per year. The number of utility model applications and grants in China has been continuous. It has ranked first in the world for many years, even exceeding the total number of utility model applications from major countries such as the United States, Japan, Germany, and South Korea. As far as utility models are concerned, China has become a veritable patent giant and is striding forward to become a patent power.
At the same time, we should also realize that the number of utility model applications and grants in China far exceeds the reality of other developed countries. This is not in line with China's scientific and technological strength. The quality of China's utility model patents needs to be improved; At the same time, the "one invention, one utility model" application system often leads to repeated examinations and wastes examination resources.
 
(4) The current development trend of China's utility model patents
1. Strengthen the examination of obvious substantive defects and improve the quality of utility model grant 
Since 2016, China has begun to control the number of utility model patent applications. One of the important measures is to strengthen the examination of obvious substantive defects in the preliminary examination process in order to improve the quality of utility model grants. From 2016 to 2019, the authorization of utility model patent rate gradually decreased from 90% to 75%; in the first half of 2019, the number of utility model patent applications was 1.01 million, a year-on-year decrease of 1.9%, and the number of utility model patents was 747,000, a year-on-year increase of 1.1%. The grant examination cycle was 6.2 months, and the authorization rate was around 75%.
 
2. The introduction of delayed examination of invention patent applications has become a trend, and the utility model system needs to be adjusted accordingly
At present, the industry calls for the introduction of delayed examination in the examination of invention patents. In 2019, the "Patent Examination Guidelines" issued by the CNIPA for solicitation of comments also included a delayed examination method. If a delayed examination system is introduced for the examination of invention patents, the time from publication to grant of an invention patent application will be longer, and the problem of temporary protection during this period will be more prominent. As one of the solutions for temporary protection, the "one invention, one utility model" application system will indeed cause a certain degree of repeated examination, and it is necessary to adjust it accordingly.
 
Comparative Research on the Patent System of Utility Models in China and Germany
 
Germany is the first country in the world to establish a utility model system, and its utility model system is similar to China in many aspects. The following will only discuss the differences between the utility model systems of the two countries in order to provide some reference for China's utility model patent system.
(1) Protect the object
The scope of German utility model protection is broader, not limited to products with a specific shape and structure, and even products limited by methods and their uses.
(2) Novelty standard
The novelty of German utility models adopts the relative novelty standard, which is lower than the absolute novelty standard and is more beneficial to applicants. Relative novelty means that the disclosure of documents that destroys its novelty refers to the global scope. In contrast, the destroy to the novelty of "the public knows, and public uses" are limited to Germany.
(3) Inventiveness standard and examination system
German utility model inventiveness requirements are relatively high, and there is no substantial difference from the inventiveness requirements of invention applications. However, because the German utility model examination adopts a registration system, it can also ensure that the applicant is granted in a short period to meet the needs of temporary protection of rights. The parties can determine the stability of the rights through the evaluation of the utility model patent application. By combining the utility model examination and registration system with the high inventiveness of the evaluation of the rights, it not only meets the needs of temporary protection but also ensures the quality of grant.
(4) Connection between utility model and invention application
It is possible to switch between utility model applications and invention applications in Germany. Suppose the applicant discovers that he has been infringed by others during the temporary protection period from the publication of the invention patent application to before the grant; In that case, he can use the invention patent application as the priority to submit a utility model application with the same technical solution in order to quickly obtain a grant for the convenient right protection. At the same time, the original invention patent application continues to remain unaffected during the examination process. This kind of utility model application is called a "branch application". The time limit for submitting a "branch application" is not limited by the one year of priority. As a supplement to the invention patent application, the "branch application" can effectively solve the problem of temporary protection of an invention patent application before it is granted.
 
Suggestions on improving China's utility model patent system 
(1) Guarantee the speed of grant while improving the quality of utility model grant
Compared with inventions, an important advantage of utility models is that they are quickly granted, and there is no open procedure before being granted. It can meet the applicant's needs for rapid grant and avoid temporary protection problems caused by disclosure. Also, due to the short examination time, it will not cause the applicant's technology to be kept secret for a long time, which may lead to a repetition of social research and development. From the perspective of ensuring the speed of grant, most countries represented by Germany adopt the registration system for utility model examinations.
However, as mentioned earlier, China is currently in the stage of transition from a patent giant to a patent power, and more consideration should be given to the quality of the grant. Therefore, it is necessary to incorporate the inventive examination of utility models into the pre-grant examination process. In this regard, China can learn from the practice of South Korea and other countries that have adopted a substantive examination system for utility models. South Korea adopted the substantive examination system in the Utility Model Law promulgated in 1961. During the period, in order to reduce the burden of examination, South Korea changed the substantive examination of utility models to formal examination in 1998. But finally, based on the consideration of grant quality and other factors, in 2006, the examination method of utility models was changed back to substantive examination. In the following years, the number of utility model applications in South Korea also dropped from 30,000 to 40,000 per year to just more than 10,000. It can be seen that the adoption of the substantive examination system can not only ensure the quality of grant but also reduce the number of utility model applications. This improvement is especially suitable for China's current national conditions that need to control the number of utility model applications and improve the quality of grant.
Of course, due to the contradiction between the tremendous amount of utility model applications in China and the relatively insufficient examination resources, it is not realistic to adopt a substantive examination system for utility model examination. Therefore, considering the speed of grant and the quality comprehensively, it is possible to consider the coexistence of the registration system and alternative substantive examination methods. For example, the registration system is adopted by default, and the substantive examination can be carried out at the request of the applicant. For utility model certificates, there can also be two different forms of utility model registration certificate and utility model patent certificate to distinguish whether the utility model has undergone substantive examination. Of course, the setting of this model requires comprehensive consideration of various factors such as national policies.
(2) Consider the problem of mutual conversion between utility model applications and invention patent applications 
China's current" one invention, one utility model" application system can partially solve the problem of mutual cooperation between utility model applications and invention applications, but there are also some unreasonable points. For example, the applicant needs to decide whether to submit the " one invention, one utility model" application at the same time as the application is submitted. Still, in fact, the applicant does not necessarily have an accurate estimate of market conditions and infringement when submitting the application. If the submission time is missed, the applicant will not be able to switch the patent type.
In this regard, it can be considered to learn from the German "Branch Application" system to arrange the mutual conversion of utility model applications and invention applications. On the one hand, it reduces the decision-making pressure of applicants. It gives them more time to observe the market prospects of technical solutions so that they can not to overly worry about the infringement of the temporary protection period during the application process. On the other hand, under the condition of reasonable arrangements for system connection, the "branch application" system can also reduce the waste of examination resources caused by repeated examinations of utility models and inventions of the same technical solution.
(3) Consider relaxing the novelty standards, and give certain protection to technical solutions that meet the conditions but misdisclosed 
At present, the novelty standards applied in Chinese patent examinations are relatively strict in the world. Even if it is an invention patent application, the United States had always applied the relative novelty standard before the 2013 American Inventions Act was amended. After the amendment, although the absolute novelty standard is applied, the inventor is given a novelty exemption against third parties for the technical solution disclosed before the application under certain conditions. Japan and South Korea have relatively broad regulations on the scope of the disclosure that do not destroy novelty before filing, which is more beneficial to applicants. In this way, applicants do not have to worry about rushing to submit patent applications due to factors such as the urgent publication time of the paper, which is beneficial to ensure the quality of application documents.
As mentioned earlier, the German utility model application adopts the relative novelty standard. In Germany, non-document publications prior to the application date and public display and use in the non-Germany territory cannot destroy the novelty of utility models. If the applicant accidentally discloses the technical proposal by mistake, he may choose to apply for a utility model for the protection of rights relief if the conditions are met. At the same time, the use of disclosure of non-prior art abroad is also a kind of institutional relief for the necessary protection of the development of national industries.
Therefore, China can consider lowering the novelty standards of utility model patents, so that utility models not only supplement the invention patents in terms of grant time and inventive height but also provide technical solutions with novelty flaws if the conditions are met. A certain degree of compensation and protection shall be given to protect technological innovation and promote industrial development.

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