Li Longtao

The Implementation Regulations of the Patent Law (hereinafter referred to as the new regulations) were promulgated on December 21, 2023, and are set to take effect from January 20, 2024. Additionally, the Patent Examination Guidelines (2023) (hereinafter referred to as the new guidelines) were also issued on December 21, 2023, and will be effective from January 20, 2024. While the new rules and guidelines specify the creativity requirements for utility models during preliminary examination, they also pose certain risks for applicants or rights holders.

1. The New Regulations Introduce Creative Preliminary Examination for Utility Models, Raising Standards

According to Rule 50(2) of the new regulations, the preliminary examination for utility models includes "...whether it does not comply with Article 22 of the Patent Law...". Here, the original criteria for preliminary examination of utility models under Article 22 of the Patent Law has been directly modified to include examination under Article 22, expanding the scope to assess both novelty and creativity during the preliminary examination of utility models.

The new guidelines, in Part 1, Chapter 2, Section 11, introduce a new provision stating that examiners will assess whether utility model patent applications exhibit obvious lack of creativity during the preliminary examination. Additionally, examiners may assess the lack of creativity in utility model patent applications based on information related to the existing technology. The criteria for creativity examination are outlined in Part 4, Chapter 6, Section 4 of the new guidelines.

In the old regulations, since the preliminary examination of utility models was limited to novelty, assessing creativity was confined to a slightly expanded scope within the novelty examination. However, the new regulations explicitly set forth the creativity requirements for the preliminary examination of utility models, providing a legal basis for subsequent examination procedures.

2. Although the New Regulations Raise Requirements for Preliminary Examination of Utility Models, the Standard for Creativity Remains Unchanged

Part 4, Chapter 6, Section 4 of the new guidelines pertains to the provisions concerning the creativity examination of utility models in the invalidation procedure. This section is consistent with Part 6, Chapter 4 of the 2010 Examination Guidelines regarding the creativity examination of utility models in the invalidation procedure. In other words, according to the new guidelines, the standard for creativity examination during the preliminary examination of utility models can be applied to the provisions for the creativity examination of utility models in the invalidation procedure, ensuring uniformity in the criteria for judging creativity during preliminary examination. Therefore, the standards for evaluating creativity in utility models during preliminary examination are clear. However, the wording in the guidelines is "whether the utility model patent application is obviously lacking in creativity during the preliminary examination." Some may misconstrue the creativity preliminary examination for utility models as an explicit examination of obvious creativity in utility model patent applications. Rather, the author believes that the term "obviously" leaves the scale of creativity preliminary examination for utility models in the hands of examiners. Given the enormous workload resulting from the annual volume of utility model applications in China, it is impractical to thoroughly search and evaluate each utility model patent application during the preliminary examination. Therefore, during the preliminary examination process, examination notices will only be issued for utility model patent applications that obviously lack creativity, and the standard for creativity examination of utility models is explicitly referenced in Part 4, Chapter 6, Section 4 of the new guidelines.

3. While the Requirements for Preliminary Examination of Utility Models are Increased, it also Brings Risks for Applicants

According to the transitional measures related to the examination and handling of patent applications under the amended Patent Law and its Implementation Rules, the new rules apply to utility model patent applications with filing dates on or after January 20, 2024. Also, from January 20, 2024, the patent administrative department of the State Council will apply the modified Article 50 of the new rules to examine patent applications during preliminary examination, substantive examination, and reexamination procedures.

According to Rule 11 of the new regulations, patent applicants must adhere to the principle of good faith. All types of patent applications should be based on genuine inventive activities and shall not involve deception or fabrication.

Under the provisions regulating patent application behavior in Article 3, abnormal application behavior includes: (1) submitting multiple patent applications with obviously identical inventive content or essentially formed by the simple combination of different inventive features; (2) submitting patent applications containing fabricated, falsified, or altered inventive content, experimental data, or technical effects, or situations involving plagiarism, simple substitution, or patchwork of existing technology or designs.

According to Part 4, Chapter 6, Section 4 of the new guidelines, for utility model patents, generally, one or two pieces of prior art can be cited to assess their creativity. In the case of utility model patents formed by the "simple overlay" of existing technology, multiple pieces of prior art can be cited to assess their creativity, as deemed necessary. In other words, utility model patent applications rejected during preliminary examination due to lack of creativity, or utility model patents invalidated due to lack of creativity, are likely to be rejected for reasons related to the "simple overlay" of existing technology. In such cases, applicants or rights holders of utility models may face risks of violating the principle of good faith.

The author believes that (1) if applicants or rights holders have submitted multiple utility model patent applications, and these applications happen to have content formed by the simple combination of different inventive features, or (2) if there are instances of simple substitution or patchwork of existing technology among the submitted patent applications, then, according to the provisions of the new rules, in cases where utility model patent applications are rejected for lack of creativity or utility model patents are invalidated for lack of creativity, applicants or rights holders are likely to violate the principle of good faith, posing potential risks.

Sometimes, at the beginning of applying for a utility model, applicants may be unable to retrieve all existing technology or may lack awareness of any violations of the principle of good faith. In such cases, the new rules or guidelines do not seem to provide clear distinctions for differentiating between the "simple combination of different inventive features" or "simple substitution, patchwork of existing technology" and the lack of creativity in utility models. Therefore, the author hopes that more specific differentiation methods can be introduced to avoid risks for applicants or rights holders of utility models.

4. Conclusion

The effective date of the new rules is January 20, 2024. After the implementation of the new rules, considering the preliminary examination system for utility models in China, the author believes that the increased creativity requirements during preliminary examination for utility models can prevent the abuse of the utility model system. However, it should also avoid unintentionally harming applicants or rights holders engaging in reasonable application behavior for utility models.

Longtao LI

Mr. Li joined NTD and began to practice law in 2005. Mr. LI has developed considerable experience in patent application drafting in English and Chinese. Over the years, Mr. LI has prepared and prosecuted for domestic and foreign clients patent applications in the fields of general machinery, mechanical engineering, automotive engineering, precision instrument, environment engineering, electro-magnetics and electro-chemistry. With his working, a great number of patent applications have been handled successfully and granted for patent rights. Mr. LI has developed considerable experiences in SIPO patent practice, including prosecution, reexamination and invalidation practice. He has been a patent drafting agent of many well-known companies such as Robert Bosch GmbH.