Recently, we are consulted by foreign clients the difference between utility model and invention by China Patent Law. Today’s post is Bridge IP Law Commentary’s reply on the question. (the image above is the logo of the State Intellectual Property Office of China, the organ administrating in patent issues)
I. The difference in the scope of the protected object
According to the patent law, the “Invention” means any new technical solution relating to a product, a process or an improvement thereof, while the “Utility model” shall refer to any new technical solution relating to a product’s shape, structure, or a combination thereof, which is fit for practical use. Despite both being the technical solution, the utility model only involves the aspect of shape, structure and other tangible solution, while the inner process or intangible solution, like molecular structure or pharmacy, is included in the invention. Therefore, the utility model shall be included in the invention, thus any invention could also be applied as the utility model.
II. The difference in creativeness
As mentioned above, since the invention already contains the utility model, then why shall the law regulate the utility model separately? The answer could only be the encouragement on innovation, for many technology is of low creativeness, thus to protect them by invention may influence the broadcast of the technology, while no protection may jeopardize the interest of the inventor. So for this reason, these technology are listed as the utility model.
By the patent law, the creativeness shall refer to the outstanding feature or material improvement of the invention and the feature or improvement of the utility model compared with the existing technology of the newly developed invention or utility model. Therefore, it could be concluded that the creativeness demands higher for invention than the utility model for the mentioned “outstanding” and “material”, while the essence of which shall be analyzed in specific cases rather than the discussion here,
III. The difference in the right granting
The administrative approval on the invention may last for 2-3 years, which includes the preliminary examination and the substantive examination; while the procedure of utility will only cost 6-8 months, with only formal examination rather than the substantive examination, which means the right will be granted when formally qualified after the examination and the technology will be opened when the granting. For this reason, the success rate of the utility model application is comparatively higher, for which could be granted when the documents are fully prepared and with no defects.
IV. The difference in protection strenghth
The major variation in the protection strenghth lies in the protection term, which is 20 years for the invention and 10 years for the utility model. Furthermore, the invention takes more advantage in right protection than the utility model for:
1. As to the infringement against the invention, the lawsuit could directly be filed with the reference to the patent certificate, while the patent assessment report is otherwise demanded for the utility model. The difference comes from the absence of material examination of the utility model before the right granting, therefore to the proof of the qualification by patent law of the utility model shall be the assessment by China IPR administration, which shall be applied in advance and be made the report in 2 months.
The report will value the utility model from multi-aspects to judge its compliance with the patent law.
By the Several Regulations on the Law Application in the Hearing of the Patent Dispute by the Supreme People’s Court, in addition to the legal exceptions like the obvious unreasonable of the invalidity claim or the utility model belongs to the public known technology, the court shall suspend the litigation proceeding of the claim of invalid utility model. For the time consuming patent invalidity examination and its followed-up reviews, such suspension may last for years, which is harmful to the right protection by the owner. But on the other hand, for the same claim against the patent, the hearing proceeding is not likely to be suspended.
The above is the difference between the invention and the utility model with each holds it advantages and drawbacks. So we suggest the applicant to consult the professionals before applying the patent for the choice of the most appropriate plan.
Other recommended posts on our website:
1．How to manage the company’s patent?
2．How to apply for the 2-dimensional bar code in China?
3．The Patent Prosecution Highway is Piloting in China.
4．How to apply for the pre-litigation injunction in China? (I)
5．The First Primary People’s Court with Jurisdiction over Patent Disputes in China
Author: Mr. Luo Yanjie
Attorney-at-law of DeBund Law Offices
Co-author: Mr. You Yunting
Founder & Editor-in-Chief of Bridge IP Law Commentary
Partner & Attorney-at-law of Shanghai DeBund Law Offices
Email: Bridge@chinaiplawyer.com, Tel: 8621-5213-4900,
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Bridge IP Law Commentary is a website focus on the introduction of commercial laws in China, especially the intellectual property laws. All the posts here are our original works. And all news or cases referred here are from public reports, and our comments or analysis are of due diligence, neutrality and impartiality, representing our own opinions only and are our original works. You may contact us shall you have any opinions or suggestions.
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