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Speeding Construction of Your Company’s ‘Great Wall’: Protecting Green Technology in China with Utility Models

Posted in Intellectual Property

Great Wall of ChinaThe Economist recently reported on a World Intellectual Property Organization study that the number of Chinese patents filed abroad is rising. China’s patent office was the busiest in the world in 2012. Coupled with this growth of IP, China is now the world’s largest economy, has a growing solar industry, and is leading the world in renewable investment. With China’s economic and IP growth, protecting your green technology in China is becoming more important. However, IP protection in China needs to be balanced against questions regarding the Chinese market, long-term plans for your green technology, or costs.

Chinese utility models provide a cheaper, faster alternative to a “regular” Chinese invention patent if your invention meets statutory requirements. Only shapes, structures, electrical circuits, or network diagrams can be protected by Chinese utility models. The claims cannot include methods or functional language. There are four main advantages for a Chinese utility model.

First, some official fees for a utility model application can be approximately 50-75 percent of a similar invention patent application. Fewer annuity fees are necessary, which lowers the long-term cost of the utility model.

Second, the examination standard is lower for a Chinese utility model. The same novelty standard is used for both Chinese utility model and invention patent applications. However, the obviousness or inventive step threshold is lower for a Chinese utility model application than a Chinese invention patent application. This means Chinese utility models are easier to obtain, more difficult to invalidate, and can potentially cover what in other countries (or even in a Chinese invention patent application) would be considered an obvious variant of an existing design.

Third, utility model applications are allowed and granted faster than invention patent applications in China. A utility model can be allowed in less than a year, whereas an invention patent application may take 2-3 years (or more).

Fourth, a Chinese utility model application can be filed in conjunction with an invention patent application on the same invention. Thus, you can have an issued utility model to assert or license until your corresponding invention patent is granted by China’s State Intellectual Property Office. Both a utility model application and invention patent application can be filed on the same day from the same U.S. priority patent application via Paris Convention. It also may be possible to file a utility model application directly from a U.S. priority patent application via Paris Convention and later file a similar (though not exact) invention patent application as a National Phase of a corresponding Patent Cooperation Treaty (PCT) application. However, work carefully with Chinese counsel to modify the corresponding claim scopes to avoid the “identical invention rule” if you plan on later filing such an invention patent application via National Phase.

Of course, utility models in China have drawbacks. A Chinese utility model only has a term of 10 years, which is half that of an invention patent. Expedited examination comes at the cost of future patent term. Conversion between a utility model application and an invention patent application to obtain the lowered inventiveness standard is not allowed. Whether an application is destined to become an invention patent or a utility model is decided at the time of filing. And while utility models have a lowered obviousness standard, an issued utility model is still subject to invalidation proceedings, which can impact infringement actions.

Consider filing a Chinese utility model application if you’re worried about potential obviousness rejections in China, want to cover an invention with a short shelf life or sustainability concerns, or just want to build your foreign patent portfolio quickly and cheaply. Inventions related to solar cells, wind turbines, electric vehicles, LED lamps, or other green technology could potentially fit within the confines of Chinese utility model claim requirements. If you are willing to accept the drawbacks, Chinese utility models can help your company build a “Great Wall” for your green technology quickly and cheaply.

 

Nathaniel Lucek is a senior associate in the Intellectual Property & Technology Law Practice at Hodgson Russ LLP. You can reach him at nlucek@hodgsonruss.com.