What is the status of the China utility model process?
Utility models (UM) are known for being cheap and automatic. For US filers seeking patent protection in China, the utility model is an attractive alternative to filing regular utility patent applications. Understandably, companies seek cost-effective ways to gain utility patent protection without spending so much. In 2020, over 2.9 million utility models were filed in China, which accounts for over 97% of such filings worldwide. These astronomical numbers bear proof that the China utility model is highly popular. IP owners want the equivalent of a utility patent without high costs.
But, where does this China utility patent alternative stand now? Has the utility model process become more difficult in China?
China patent protection without examination?
The whole point of filing a UM is to skip substantive examination. So why does it appear that the China patent office has been examining and rejecting utility models more recently? What changed at CNIPA?
First, it appears that the China patent office can issue an Office Action pointing out “defects” in the UM. Are such defects substantive or nonsubstantive? For example, the China patent office can reject a utility model for any issues seen in the drawings and shortness of claims.
Second, the China patent office can actually reject a utility model based on prior art. It seems that such a substantive examination defeats the purpose of filing this type of application in the first place.
Can responses and additional costs be required in a UM filing?
Additional costs are possible in a China UM filing. For example, the China patent office may require a response to an Office Action to resolve the defects found by the examiner. As discussed above, those problems may very well be novelty issues. In other words, the invention is not unique over the prior art. Sounds a lot like a substantive Office Action, right?
Is there a way to avoid substantive examination of utility models?
I don’t profess to know the inner workings of the China patent office. However, common sense will provide some clues. With 3 million UM filings per year and growing, practical considerations will most likely drive the decision on if and how utility models are examined. Think about it for a second. How in the world will patent examiners substantively review three million patent cases per year? And that is on top of the regular utility patent applications that must be examined.
Perhaps, technology one day will aid in the substantive examination of utility models. For the time being, it may make sense to be aware of any prior art shortcuts that would be readily available to examiners.
Need to file a China utility model?
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