Phil (Boyang) Yu
Chinese Patent Attorney
Registered U.S. EIT Mechanical Engineer
Patent Engineer of Mechanical Engineering Department, Patent Engineer of US/EP Group
Hello everyone, the topic of today is the utility model system in China. The utility model is a preferred way for applicants to protect their technical solutions in China. There are a couple of key points for utility model applications need to be noted. First, the protection period for utility models lasts 10 years, which is different from 20 years of protection period for inventions. Second, utility models basically protect technical solutions of the shapes or structures of devices.In other words,methods are NOT subject matters as patentable for utility models.
According to Chinese practice, there is no substantive examination process for the utility model applications. In general, they will be only examined in formality, and there is no specific examination of the inventiveness for utility model applications.Therefore, it only takes 6 months approximately for utility models to be granted, and the granting rate is much higher than invention application, which is about 90%. It is notable that, in recent years, China National Intellectual Property Administration(aka CNIPA)is focusing on improving the quality of examination for utility models.Thus, the examination for novelty of utility model applications has become more stringent. Consequently, the examination period for certain applications may last about 1 year, and the average granting rate is also decreased to about 75%. However, compared with invention applications, utility models still have significant advantages in granting rate and time cost for granting.
A further advantage of utility models is lower application cost. Compared with inventions, the application official fee and annual fee are lower, and service fee charged by most of law firms is also cheaper. For this reason, many applicants from small entities would like to apply for utility models to protect their technical solutions. Besides, more and more large enterprises are also starting to treat utility models as an essential filing strategy. From our perspective, in the situation that clients are concerned about the cost for applications, we would recommend them to use utility models as a primary filing method.
When applying for utility models, there are a couple of critical issues need to be noted. First, it is favorable that overcoming all of formal defects for the utility model applications before filing. As mentioned before, there is no substantive examination process for utility model applications, but the examination for formality is relatively strict. Thus, the examiner will issue notifications if formal defects are not overcome before filing, which will delay the granting time and might cause more attorney fee. This will weaken the advantage of utility models in terms of granting speed. Second, an additional official fee will be charged if the number of claims for utility models exceeds ten. In detail, it will be charged 150 yuan for each claim. Typically, in order to avoid any addition cost, we recommend applicants to decrease the number of claims to ten in the phase of filing.Last but not least, the patentable subject matters for utility model exclude methods. If the drafted claims contain method claims, we generally suggest clients to remove method claims or filing the application as an invention.
In summary, utility model is a cost-effective way to protect your intellectual property. It has limitations in subject matters of protection. Yet, due to favorable effect of time cost, money cost and granting rate, utility model becomes an excellent choice of patent application, not only for Chinese applicants, but also for foreign ones.
