Li Longtao
The new Patent Law Implementation Regulations (hereinafter referred to as the new regulations) were promulgated on December 21, 2023, and will take effect on January 20, 2024. In addition, the Patent Examination Guidelines (2023) (hereinafter referred to as the new guidelines) were also promulgated on December 21, 2023, and will take effect on January 20, 2024. The utility model system is a practical Chinese patent system that currently aligns well with the patent application needs of a wide range of applicants. It is an essential component of China's patent protection system. This article aims to summarize the changes in the utility model system outlined in the new regulations with reference to the new guidelines, assisting applicants in judiciously utilizing the utility model system under the provisions of the new regulations.
1. Amendments to the Confidentiality Examination System Relevant to Utility Models under the New Regulations
Rule 9 of the new regulations | Comparison between Rule 9 of the old regulations and Rule 9 of the new regulations |
When the patent administration department under the State Council receives a request filed under Rule 8 of these Implementing Regulations and finds, upon examination, that the invention or utility model may relate to the security of vital interest of the State and is required to be kept secret, it shall promptly issue a notification of confidentiality examination to the applicant. A time extension of 2 months is allowable in complex cases for issuing the notification. Where the patent administration department under the State Council carries out a confidentiality examination in accordance with the notification prescribed in the preceding paragraph, it shall make a decision on whether the invention or utility model is required to be kept secret within four months from the date of filing its or his request and notify the applicant accordingly. A time extension of 2 months is allowable in complex cases for issuing the notification. | When the patent administration department under the State Council receives a request filed under Rule 8 of these Implementing Regulations and finds, upon examination, that the invention or utility model may relate to the security of vital interest of the State and is required to be kept secret, it shall promptly issue a notification of confidentiality examination to the applicant. If the applicant fails to receive the notification of confidentiality examination within four months from the date of filing its or his request, it or he may file, in respect of the invention or utility model, an application for patent in a foreign country or an international patent application with the relevant foreign organizationA time extension of 2 months is allowable in complex cases for issuing the notification. Where the patent administration department under the State Council carries out a confidentiality examination in accordance with the notification prescribed in the preceding paragraph, it shall promptly make a decision on whether the invention or utility model is required to be kept secret within four months from the date of filing its or his request and notify the applicant accordingly. A time extension of 2 months is allowable in complex cases for issuing the notificationIf the applicant fails to receive such a decision within six months from the date of filing its or his request, it or he may file, in respect of the invention or utility model, an application for patent in a foreign country or an international patent application with the relevant foreign organization. |
According to Rule 9, Paragraph 1 of the new regulations, if an applicant does not receive a confidentiality examination notice within 4 months of submitting a patent confidentiality examination request, it or he may independently file an application for patent in a foreign country or submit an international patent application to a relevant foreign institution.
Furthermore, according to Rule 9, Paragraph 2 of the new regulations, an applicant will not be allowed to file an application for patent in a foreign country or submit an international patent application to a relevant foreign institution if it or he does not receive a confidentiality examination decision within 6 months of submitting a patent confidentiality examination request.
From the amendments in Rule 9 of the new regulations, it is evident that, whether for inventions or utility models, if an applicant intends to apply for a patent in a foreign country or submit an international patent application to a relevant foreign institution, it or he must obtain a prior decision on non-confidentiality through a confidentiality examination. Additionally, the new regulations provide clear deadlines for the China National Intellectual Property Administration (CNIPA) to process confidentiality examination requests. Within 2 months of submitting a patent confidentiality examination request, a confidentiality examination notice (with a possible extension of 2 months in complex cases) should be issued for the applicant. Within 4 months of submitting a patent confidentiality examination request, a decision on whether confidentiality is necessary should be made (with a possible extension of 2 months in complex cases). This provides applicants with specific time frames to plan ahead when applying for patents abroad or submitting international patent applications to relevant foreign institutions.
2. Changes in the Form Requirements of Utility Model Application Documents under the New Regulations
Rule 26, Paragraph 2 of the new regulations | Comparison between Rule 23, Paragraph 2 of the old regulations and Rule 26, Paragraph 2 of the new regulations |
The abstract may contain the chemical formula which best characterizes the invention. In an application for a patent which contains drawings, the applicant shall specify a figure which best characterizes the technical features of the invention or utility model as the abstract drawing. The whole text of the abstract shall contain not more than 300 words. There shall be no commercial advertising in the abstract. | The abstract may contain the chemical formula which best characterizes the invention. In an application for a patent which contains drawings, the applicant shall specify provide a figure which best characterizes the technical features of the invention or utility model as the abstract drawing. The scale of the distinctness of the figure shall be as such that a reproduction with a linear reduction in size to 4cm*6cm would still enable all details to be clearly distinguished. The whole text of the abstract shall contain not more than 300 words. There shall be no commercial advertising in the abstract. |
According to Rule 26, Paragraph 2 of the new regulations, there is no longer a separate requirement to submit, as an abstract drawing, a selected drawing from the description drawings in addition to the drawings selected for the application in the utility model's application documents. Instead, only one drawing from the description drawings needs to be specified as the abstract drawing in the request.
Regarding this change, Section 7.5, Item 5 of the first part of the new guidelines has been synchronized, stating, "The abstract of the specification should have an abstract drawing, and the applicant should specify a drawing selected from the description drawings that reflects the technical solution as the abstract drawing and indicate the drawing number in the request."
3. Changes in Priority Claim Requirements Related to Utility Models under the New Regulations
Rule 35 of the new regulations | Comparison between Rule 32 of the old regulations and Rule 35 of the new regulations |
An applicant may claim one or more priorities for an application for a patent; where multiple priorities are claimed, the priority period for the application shall be calculated from the earliest priority date. Where an applicant of an invention or utility model claims the right of domestic priority, if the earlier application is one for a patent for invention, he or it may file an application for a patent for invention or utility model for the same subject matter; if the earlier application is one for a patent for utility model, he or it may file an application for a patent for utility model or invention for the same subject matter. Where an applicant of a design patent claims the right of domestic priority, if the earlier application is one for a patent for invention or utility model, he or it may file an application for a patent for design with respect to the design shown by the drawings of earlier application; if the earlier application is one for a patent for design, he or it may file an application for a patent for design for the same subject matter. However, when the later application is filed, if the subject matter of the earlier application falls under any of the following, it may not be taken as the basis for claiming domestic priority: (1) where the applicant has claimed foreign or domestic priority; (2) where it has been granted a patent right; (3) where it is the subject matter of a divisional application filed as prescribed. Where the domestic priority is claimed, the earlier application shall be deemed to be withdrawn from the date on which the later application is filed. Except where the applicant of the design patent requests that the application for a patent for invention or utility model be used as the basis for the priority of the country. | An applicant may claim one or more priorities for an application for a patent; where multiple priorities are claimed, the priority period for the application shall be calculated from the earliest priority date. Where an applicant of an invention or utility model claims the right of domestic priority, if the earlier application is one for a patent for invention, he or it may file an application for a patent for invention or utility model for the same subject matter; if the earlier application is one for a patent for utility model, he or it may file an application for a patent for utility model or invention for the same subject matter. Where an applicant of a design patent claims the right of domestic priority, if the earlier application is one for a patent for invention or utility model, he or it may file an application for a patent for design with respect to the design shown by the drawings of earlier application; if the earlier application is one for a patent for design, he or it may file an application for a patent for design for the same subject matter. However, when the later application is filed, if the subject matter of the earlier application falls under any of the following, it may not be taken as the basis for claiming domestic priority: (1) where the applicant has claimed foreign or domestic priority; (2) where it has been granted a patent right; (3) where it is the subject matter of a divisional application filed as prescribed. Where the domestic priority is claimed, the earlier application shall be deemed to be withdrawn from the date on which the later application is filed. Except where the applicant of the design patent requests that the application for a patent for invention or utility model be used as the basis for the priority of the country. |
In essence, the changes stipulated in Rule 35 of the new regulations mainly indicate that the drawings of a utility model patent application can serve as the basis for claiming domestic priority for a design patent application. This imposes higher requirements on the drafting and preparation of drawings for utility model patent applications, considering that the applicant may later seek priority for design patent applications based on utility model patent applications.
Rule 36 of the new regulations | No corresponding Rule in the old regulations. |
Where an applicant, exceeding the time limit prescribed in Article 29 of the Patent Law, files with the patent administration department under The State Council an application for a patent for invention or utility model in respect of the same subject matter, with justifiable reasons, it or he may, within 2 months from the date of expiration of the time limit, request the restoration of the right of priority. | |
Rule 37 of the new regulations | No corresponding Rule in the old regulations |
Where the applicant for a patent for invention or utility model claims the right of priority, it or he may, within 16 months from the date of priority or within 4 months from the date of filing, request that the claim for priority be added to or corrected in the application. |
Corresponding to Rule 36 of the new regulations, Section 6.2.6.2 has been added to the first part of the new guidelines. According to this section, if a later application is filed after the expiration of 12 months from its priority date, the applicant can request the restoration of priority within two months from the expiration date before the Patent Office completes the publication preparation. This does not apply to the situations stipulated in Rule 37 of the Patent Law Implementation Regulations; Rule 36 of the Patent Law Implementation Regulations does not apply to cases where the applicant delays the deadline specified in Article 36 of the Patent Law Implementation Regulations.
Corresponding to Rule 36 of the new regulations, Section 6.2.3 of the first part of the new guidelines has been modified. According to this section, if an applicant requests a priority claim according to Article 37 of the Patent Law Implementation Regulations, the applicant can, within 16 months from the priority date or within four months from the application date, request an increase or correction of the priority claim before the Patent Office completes the publication preparation. If the request to increase or correct the priority claim complies with the regulations, it is deemed that the priority claim declaration is in compliance, and the examiner should review the priority claim according to other provisions in Section 6.2.1 and Section 6.2.2 of the first part of the new guidelines. This does not apply to situations stipulated in Article 36 of the Patent Law Implementation Regulations, and Article 37 of the Patent Law Implementation Regulations does not apply to the deadlines specified in Article 37 of the Patent Law Implementation Regulations.
As seen from the relevant provisions of the new guidelines, if an applicant requests the restoration of priority under Rule 36 of the new regulations or requests to add or correct a priority claim in the request according to Rule 37 of the new regulations, it is necessary not only to meet the relevant time requirements but also to do so before the Patent Office completes the publication preparation. Therefore, it is advisable for applicants to submit relevant requests as early as possible if needed.
4. Changes in the Legal Basis for Preliminary Examination of Utility Models under the New Regulations
Rule 50, Item 2 of the new regulations | Comparison between Rule 44, Item 2 of the old regulations and Rule 55, Item 2 of the new regulations |
(2) whether or not any application for a patent for utility model obviously falls under Article 5 or 25 of the Patent Law, or is not in conformity with the provisions of Article 17, Article 18, paragraph one, Article 19, paragraph one of the Patent Law or Rule 11, Rules 19 to 20 or Rules 24 to 26 of these Implementing Regulations, or is obviously not in conformity with the provisions of Article 2, paragraph three, Article 22, Article 26, paragraph three or four, or of Article 31, paragraph one, or of Article 33 of the Patent Law, or of Rule 23 or Rule 49, paragraph one of these Implementing Regulations, or is not entitled to a patent right in accordance with the provisions of Article 9 of the Patent Law. | (2) whether or not any application for a patent for utility model obviously falls under Article 5 or 25 of the Patent Law, or is not in conformity with the provisions of Article 17, Article 18, paragraph one, Article 19, paragraph one or Article 20, paragraph one of the Patent Law or Rule 11, Rules 169 to 1920 or Rules 214 to 236 of these Implementing Regulations, or is obviously not in conformity with the provisions of Article 2, paragraph three, Article 22, paragraph two or four, Article 26, paragraph three or four, or of Article 31, paragraph one, or of Article 33 of the Patent Law, or of Rule 203 or Rule 439, paragraph one of these Implementing Regulations, or is not entitled to a patent right in accordance with the provisions of Article 9 of the Patent Law. |
The new regulations and guidelines have outlined the requirements for inventive step during the initial examination of utility models. While the increased inventive step requirements during the preliminary examination of utility models are intended to prevent misuse of the utility model system, it should also avoid adversely affecting applicants or rights holders engaged in reasonable application practices for utility models. For a detailed discussion on the modifications in the examination of inventive step for utility models, please refer to my other article, "Interpretation of the New Patent Law Implementation Regulations: Increase in Inventive Step Requirements for Utility Models and Related Risks."
6. Changes in the Provisions for Patent Evaluation Reports Related to Utility Models under the New Regulations
Rule 62 of the new regulations | Comparison between Rule 56 of the old regulations and Rule 62 of the new regulations |
After the announcement of the decision to grant a patent for utility model or a patent for design, the patentee, or the interested party, the alleged infringer prescribed in Article 66 of the Patent Law may request the patent administration department under the State Council to make an evaluation report of patent. The applicant may, when going through the formalities for registration of the patent right, request the patent administration department under The State Council to make a patent evaluation report. Where such person requests for an evaluation report of patent, he shall submit a request for the evaluation report of patent, indicating the patent application number or the patent number. Each request shall be limited for one patent application or one patent. Where the request for the evaluation report of patent does not comply with the requirements as prescribed, the patent administration department under the State Council shall notify the requesting part to rectify the request within a specified time limit. If the requesting part fails to do so within the time limit, the request shall be deemed not to have been submitted. | After the announcement of the decision to grant a patent for utility model or a patent for design, the patentee, or the interested party, the alleged infringer prescribed in Article 606 of the Patent Law may request the patent administration department under the State Council to make an evaluation report of patent. The applicant may, when going through the formalities for registration of the patent right, request the patent administration department under The State Council to make a patent evaluation report. Where such person requests for an evaluation report of patent, he shall submit a request for the evaluation report of patent, indicating the patent application number or the patent number. Each request shall be limited for one patent application or one patent. Where the request for the evaluation report of patent does not comply with the requirements as prescribed, the patent administration department under the State Council shall notify the requesting part to rectify the request within a specified time limit. If the requesting part fails to do so within the time limit, the request shall be deemed not to have been submitted. |
Rule 63 of the new regulations | Comparison between Rule 57 of the old regulations and Rule 63 of the new regulations |
The patent administration department under the State Council shall make the evaluation report of patent within two months from receiving of the request for the evaluation report of patent. However, where the applicant requests a patent evaluation report when going through the formalities for the registration of the patent right, the patent administration department under The State Council shall make a patent evaluation report within two months from the date of the announcement of the grant of the patent right. Where two or more persons request for the evaluation report of patent in respect of a same patent for utility model or patent for design, the patent administration department under the State Council shall make one evaluation report only. Any entity or individual may review or copy the evaluation report of patent. | The patent administration department under the State Council shall make the evaluation report of patent within two months from receiving of the request for the evaluation report of patent. However, where the applicant requests a patent evaluation report when going through the formalities for the registration of the patent right, the patent administration department under The State Council shall make a patent evaluation report within two months from the date of the announcement of the grant of the patent right. Where two or more persons request for the evaluation report of patent in respect of a same patent for utility model or patent for design, the patent administration department under the State Council shall make one evaluation report only. Any entity or individual may review or copy the evaluation report of patent. |
According to Rules 62 and 63 of the new regulations, relevant refinements have been made to the entities eligible to request a patent evaluation report for utility models, the timing of such requests, and the examination period. Under the new regulations, the entities eligible to request a patent evaluation report for utility models now include the "alleged infringer." Additionally, applicants for utility models can request a patent evaluation report when handling patent registration procedures. For applicants who request a patent evaluation report during the patent registration procedures, the new regulations further specify the examination period for the State Intellectual Property Office, stating that it "shall make a patent evaluation report within 2 months from the date of the announcement of the granting of the patent." These regulations provide alleged infringers with the opportunity to present a defense by requesting a patent evaluation report. Furthermore, applicants of utility models can evaluate the stability of their utility model patents in advance, saving social resources. For details on the modifications related to the patent evaluation report system, please refer to Lawyer Mu Haoliang's article, "Improvements to the Patent Evaluation Report System."
6. Regulations Related to Patent Term Compensation for Utility Models under the New Regulations
Rule 78, Paragraph 4 of the new regulations | No corresponding Rule in the old regulations |
The same applicant applies for both a utility model patent and an invention patent for the same invention-creation on the same day, where a patent right for invention is obtained in accordance with the provisions of paragraph 4 of Rule 47 of the regulations, the term of the patent right for invention shall not apply to the provisions of paragraph 2 of Article 42 of the Patent Law. |
In correspondence with Rule 78, Paragraph 4 of the new regulations, Section 9 of the fifth part of the new guidelines provides detailed regulations on patent term compensation. In fact, according to Article 42, Paragraph 2 of the Patent Law, there is no provision for patent term compensation for utility model patents. However, according to Rule 78, Paragraph 4 of the new regulations, there is a risk that if an applicant adopts the widely used strategy of simultaneously filing utility model and invention patent applications on the same day to seek patent protection, they may not be eligible for patent term compensation in the future after the invention patent application is granted. This requires applicants to anticipate potential issues related to patent term compensation for invention patent applications in advance when devising their application strategies. For specific information on the improvement of the patent term compensation system for invention patents, please refer to Lawyer Mu Xian's article, "Improvements to the Patent Term Adjustment ('PTA') System."
7. Provisions Related to Incentives and Remuneration for Utility Model Inventions under the New Regulations
Rule 93, Paragraph 1 of the new regulations | Comparison between Rule 77, Paragraph 1 of the old regulations and Rule 93, Paragraph 1 of the new regulations |
Where the entity to which a patent right is granted has not entered into a contract with the inventor or creator on the manner and amount of the reward as prescribed in Article 15 of the Patent Law, nor has the entity provided it in its rules and regulations formulated in accordance with the laws, it shall, within three months from the date of the announcement of the grant, award to the inventor or creator of a service invention-creation a sum of money as prize. The sum of money prize for a patent for invention shall not be less than RMB 4, 000 yuan; the sum of money prize for a patent for utility model or design shall not be less than RMB 15, 00 yuan. | Where the entity to which a patent right is granted has not entered into a contract with the inventor or creator on the manner and amount of the reward as prescribed in Article 165 of the Patent Law, nor has the entity provided it in its rules and regulations formulated in accordance with the laws, it shall, within three months from the date of the announcement of the grant of the patent right, award to the inventor or creator of a service invention-creation a sum of money as prize. The sum of money prize for a patent for invention shall not be less than RMB 34, 000 yuan; the sum of money prize for a patent for utility model or design shall not be less than RMB 1, 5000 yuan. |
Rule 94 of the new regulations | Comparison between Rule 78 of the old regulations and Rule 94 of the new regulations |
Where the entity to which a patent right is granted has not entered into a contract with the inventor or creator on the manner and amount of the remuneration as prescribed in Article 15 of the Patent Law, it shall award reasonable remuneration to the inventor or creator according to Law of the People's Republic of China on the Promotion of the Transformation of Scientific and Technological Achievements. | Where the entity to which a patent right is granted has not entered into a contract with the inventor or creator on the manner and amount of the remuneration as prescribed in Article 165 of the Patent Law, nor has the entity provided it in its rules and regulations in accordance with the laws, it shall, after exploiting the patent for invention-creation within the duration of the patent right, draw each year from the profits from exploitation of the invention or utility model a percentage of not less than 2%, or from the profits from exploitation of the design a percentage of not less than 0.2%, and award it to the inventor or creator as remuneration. The entity may, as an alternative, by making reference to the said percentage, award a lump sum of money to the inventor or creator as remuneration once and for all. Where any entity to which a patent right is granted authorizes any other entity or individual to exploit its patent, it shall draw from the exploitation fee it receives a percentage of not less than 10% and it shall award it reasonable remuneration to the inventor or creator according to Law of the People's Republic of China on the Promotion of the Transformation of Scientific and Technological Achievements as remuneration. |
According to Rule 93 of the new regulations, the minimum statutory reward amount for utility model inventors has been increased, encouraging or motivating utility model inventors to actively engage in inventive activities. Additionally, Article 94 of the new regulations directly incorporates provisions from the "Law of the People's Republic of China on the Promotion of the Transformation of Scientific and Technological Achievements" as the basis for calculating remuneration for utility model inventions. This is of great significance for enhancing the legal framework for remuneration related to utility model inventions. For an introduction to the rewards for utility model inventions, please refer to Lawyer Liu Lanlan's article, "Rewards for Utility Model Inventions."
5. Conclusion
The effective date of the new regulations is January 20, 2024. After the implementation of the new regulations, the utility model system will have a significant impact on the application strategies of applicants. This article aims to outline the important regulatory changes related to the utility model system in the new regulations, facilitating applicants in effectively protecting their legitimate rights under the utility model system.
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.
