Utility model, another option for patent protection in China

Borsam IP
BORSAM IP———————————————

WIPO recently released the latest statistics on intellectual property data for 2020. In term of volume, invention patent filing around the word numbered 3.2 million, applications for utility models-a special form of patent right-grew by 9.1% to reach 2.3 million applications. Judging from the number of applications alone, utility model is also an important type of patent protection that cannot be ignored.

Utility models are not available in all jurisdiction. According to the statistics, of the 2.3 million utility model applications filed globally in 2019, the IP office of China (i.e., CNIPA) received 96.9% of the world total-the other 79 offices together receiving just 3.1%. Applications at the offices of Germany, Japan and the Republic of Korea declined substantially between 2009 and 2019. In contrast, China saw enormous growth over the same period.


According to CNIPA's statistics, in 2019, CNIPA received 1.401 million invention patent applications and 2.268 million utility model patent applications. In 2020, CNIPA received about 1.566 million invention patent applications, and about 2.982 million utility model applications. Therefore, in China, compared with invention patents, more applicants choose to protect their technical solutions through utility models. Perhaps this is related to the fact that the requirements for utility models are not as strict as the invention patents.
In addition, according to CNIPA statistics, in 2020, 2.377 million utility model patents were granted in China, of which applications from mainland China accounted for 99.6%, and applications from Hong Kong, Macau, Taiwan and other countries accounted for only 0.4%. This further shows that the vast majority of Chinese utility model applicants are from mainland China.

In short, from the above data, the utility model applications in the world are mainly Chinese utility model applications, and the main applicants are applicants from mainland China. More foreign applicants in China will directly choose invention as the type of patent application. They may consider the longer protection period and more stable rights of invention patents. However, there may be another reason that many foreign applicants do not know China will provide a utility model application, or do not know enough about utility models. This article will introduce the comparison between utility models and inventions and the advantages and disadvantages of utility models.



1. Comparison of utility model and invention

The following table shows the main differences between invention and utility model (in China, patents include three types: invention, utility model and design).

2. The advantages and disadvantages of utility model

From the above comparison, it can be seen that compared to inventions, utility models have their advantages and disadvantages that cannot be ignored. The following is a brief summary for everyone to have a comprehensive consideration when determining the type of patent application.
1) The examination procedure of utility model is simpler and shorter, so it can be granted faster;
2) The utility models are easier to get granted since the inventive step is not examined;
3) The utility models have lower requirements for inventive steps, and if there are indeed innovations, it is more difficult to be declared invalid;
4) The filing fee and annual fee of utility model are cheaper, and there is no substantive examination fee;
5) The utility model examination process is confidential and will not be interfered by a third party (that is, the third party cannot raise objections during the examination process).

The above summarizes some of the advantages of the utility model. Of course, a utility model does not only have advantages. Compared with inventions, it still has some disadvantages, such as:
1) The protection period of utility model is relatively short, only 10 years;
2) The scope of utility models is narrower than that of inventions, and is limited to innovative solution related to the shape, the structure, or their combination of a product; inventions can protect new technical solution relating to a product, a process or improvement thereof;
3) After the utility model is granted, it is still uncertain whether there is novelty or creativity, and it is necessary to obtain a positive patent right evaluation report before rights protection or customs record.
Special reminder: except for PCT national phase applications, applicants can simultaneously file invention and utility model patent applications for the same technical solution. Generally speaking, a utility model application will be granted first, and the corresponding rights can be occupied first; when the invention application is granted, the right to the invention can be obtained by waiving the utility model. However, under this application method, the examination process of invention application usually slows down, that is, it takes 4 to 5 years.
In short, utility model as a special form of patent right has become an important type of patent chosen by applicants in China. Compared with inventions, utility models have great advantages, but there are also some disadvantages. Applicants can choose the appropriate patent type(s) to protect their technical solutions according to their own needs.