中国的实用新型专利 Utility Model Patent in China 邱军柳沈律师事务所 Jun Qiu Liu, Shen & Associates 1 Overview Basics Statistics Concerns Strategies 2 1
Patent Law Article 2 of the Chinese Patent Law Utility Model: any new technical solution relating to the shape, the structure, or their combination, of a product, which is fit for practical use. 3 Utility Model Timeline 6-18 months Preliminary Examination Filing Date /Priority Date Grant & Publication Date 4 2
Utility Model Patent Basics Limited subject matter shape or structure of a product Preliminary examination No search before 2013 Novelty search since amendment of Guideline in 2013 Quick allowance Most 6-12 months Short patent term 10 years 5 Statistics on Utility Model Patent Utility Model Applications Received by SIPO (2008-2013) 1,000,000 900,000 800,000 700,000 600,000 500,000 400,000 300,000 200,000 100,000 0 892362 740,290 585,467 409,836 310,771 225,586 2008 2009 2010 2011 2012 2013 6 3
Utility Model Statistics: interesting? Utility Model Applications Received: Foreign vs. Domestic (2008-2013) 900,000 800,000 700,000 600,000 500,000 400,000 300,000 200,000 100,000 0 7,136 5,853 4,164 1,641 1,910 2,598 581,303 734,437 885,226 407,283 308,861 223,945 2008 2009 2010 2011 2012 2013 Foreign Domesti c 7 Chinese Utility Model Utility model patents filed by foreign applicants: 0.8%! 8 4
Utility Model applications from foreign applicants (2013) Country Number Percentage* Japan 3,048 6.8 % USA 1,658 5.2 % Germany 727 5.0 % Korea 253 2.3 % France 246 5.6% Swiss 183 5.4% UK 145 7.3% * Percentage of utility model application in total number of utility model and invention application 9 Utility Model Concerns True or false Limited subject matter Low quality Not stable Less damage 10 5
Subject Matter No software utility model If no invention is made on the hardware, improvements on software is not patentable for utility model Redrafting as device claim would not succeed No material utility model No surface design utility model More difficult to obtain utility model patents for semiconductor, telecommunication industry 11 Quality SIPO intends to improve quality of utility model patent Amendment of Examination Guideline Enforced on October 15, 2013 Examiner is allowed to search for determining novelty Applicant might receive OA for novelty rejection Applicant is allowed to amend the claims in response to OA. Applicant should avoid overbroad claims or claims with scarce words, which might trigger novelty search by the examiner 12 6
Stability Good Stability In Invalidation Proceeding Lower standard of inventive step Difficulties for collecting prior use evidence *According to the Patent Reexamination Board statistics of the invalidation decisions from 2002 to 2012 Utility model patent: 52.6% valid 35.6% invalid 11.8% partially invalid Invention patents: 58.1% valid 13 Low Inventive Step Requirement INVENTION UTILITY MODEL Novelty Not disclosed by the prior art same Inventiveness prominent substantive features and represents a notable progress substantive features and represents a progress Practical Applicability Can be used, made, and produced effective results same 14 7
Low Inventive Step Requirement INVENTION UTILITY MODEL Number of References no limitation one or two prior art references Requirement on the Field of References the same or relevant technical field the same field 15 Case Example 1 Invalidation Decision No. 13581 (battery) Petitioner cited D1 D4 against inventive step Technical field of the utility model patent: housing structure of battery assembly (H01M2/10) Technical field of D1 D4: electric connection device or electric device (H01R13/62, G06F3/00, H05K5/00) 16 8
Case Example 1 Invalidation Decision No. 13581 (battery) The utility model patent and D1-D4 have different IPC, belong to different technical fields The housing structure of battery assembly protected by claims 1 4 of the utility model patent is not a simple combination of features, and the petitioner did not prove that said technical solution is a simple combination of features provided in the prior documents; The combination of more than two cited references should not be applicable to this case. 17 Case Example 2 A patentee owns a patent protecting a diagnosis method, a machine using the method and dominates Chinese market for decades A competitor in China filed a utility model patent for the machine, and start making and selling such machines, and using such method The patentee sued the competitor for patent infringement of its patent claiming the method The competitor counter-sued the patentee for patent infringement of their utility model patent claiming the machine An attempt to invalid the utility model patent of the competitor was failed due to the difficulties in establishing the chain of evidence proving the prior use 18 9
Case Example 3 A patentee owns a number of invention and utility models patents for a home appliance product. Many infringers were found in China. The clients initiated a number of patent infringement litigations The validities of the invention and utility models patents were challenged by different alleged infringers in PRB Among these invalidation requests, PRB s decisions concerning invention patents were not positive; but all PRB s decisions concerning utility model patents are in favor of the patentee 19 Infringement Damage No difference in damage calculation between infringement of invention patent and infringement of utility model patent Sizable Damages available CHINT vs. SCHNEIDER (circuit breaker) First instance: 335 million RMB (53 million USD) Second instance: settled at 157 million RMB (25 million USD) Goertek vs. Knowles (microphone) First instance: 37.2 million RMB (6 million USD) 20 10
Valuable Utility Model Limited subject matter Improved quality Good stability Sizable damage 21 Strategies Filing utility model patents instead of prosecuting invention patent for products with short life cycle Considering dual filing to improve enforceability Filing one invention patent and one utility model at the same day Filing picture claims matching with real product Infringing products are often dead copy of patentee product Good patentability to survive preliminary examination and invalidation Filing more utility models if possible to enrich your patent portfolio 22 11
Dual Filing Applying both utility model patent and invention patent for the identical invention on the same day Declaring to abandon the utility model patent if the invention patent is granted 23 Dual Filing INVENTION Grant Date 2-3 years 12-18 months Grant Date Abandon Date Filing Date /Priority Date UTILITY MODEL 24 12
Thank You! 25 13