Patent Examination Procedures in China (III) Obvious Inventiveness Examination of Utility Model Patents

View: 346     Date: 2024-02-19 08:58

Author: Baitao XIE

With the promulgation and implementation of the Implementing Regulations of the Patent Law and the Guidelines for Patent Examination (2023), the obvious inventiveness examination policy for utility model patents has officially entered the implementation stage.

I. The legal basis of the obvious inventiveness examination of utility model patents.

1. Relevant provisions of the Patent Law

Article 22: Any invention or utility model for which patent right is granted shall possess novelty, inventiveness and practicality. Inventiveness means that, compared with the prior art, the invention has outstanding substantive features and remarkable progress, and the utility model has substantive features and progress.

2. The relevant provisions of the Implementing Regulations of the Patent Law

Rule 50: “Preliminary examination” referred to in Articles 34 and 40 of the Patent Law means the examination of patent application to see whether or not it contains the documents as stipulated in Article 26 or 27 of the Patent Law and other necessary documents, and whether or not those documents are in the prescribed form, such examination shall also include the following:

... ;

(2) Whether application for a utility model patent...... is or not in conformity with the provisions of the patent law...... Article 22...;

3. The relevant provisions of the Guidelines for Patent Examination

The Part I of the Chapter 2 stipulates the preliminary examination of utility model patent applications, specifically, section 11 "Examination in accordance with term 2 and 3 of Article 22 of the Patent Law", paragraph 3 stipulates: the examiner can examine whether the utility model patent application is obviously lack of inventiveness on the basis of the obtained information of prior art. The examination of inventiveness shall refer to the provisions of Section 4, Chapter 6, Part IV of the Guidelines.

Section 4, Chapter 6 of Part IV stipulates the examination of inventiveness of utility models in the invalidation procedure: the requirement of inventiveness for a utility model shall be lower than that for an invention. The difference in requirement of inventiveness for a utility model and for an invention is mainly indicated by whether there exists a technical teaching in the prior art. In determining whether there exists a technical teaching in the prior art, a utility model differs from an invention in the following two aspects.

(1)  Field of prior art references. For a utility model, the examiner will normally focus on the technical field to which the utility model belongs. Where there is a clear technical teaching, for example, where there is an explicit description in the prior art, to prompt a person skilled in the art to look for technical means in a proximate or relevant technical field, the proximate or relevant technical field may be considered. (2) Number of prior art references. For a utility model, normally one or two prior art references may be cited to assess its inventiveness. Where the utility model is made just by juxtaposing some prior art means, the examiner may, according to the circumstance of the case, cite more than two prior art references to assess its inventiveness.

II. Standard speculation for the examination of obvious inventiveness of utility models

Before the promulgation of the regulations on the examination of obvious inventiveness, the method for examination of novelty mainly followed two points: First, in the case of having no distinguishing technical features between the utility model and the prior art reference, it is directly concluded that the utility model lacks novelty; Secondly, in the case of having minor distinguishing features, it may be concluded that the utility model lacks novelty based on the prior art reference combined with a direct substitution of conventional technical means.

At present, the number of utility model patent applications is still huge. Considering that the original intention of the utility model scheme is to realize the rapid grant and rapid use, and the paragraph 3 of Article 22 of the Patent Law also clearly stipulates different inventiveness requirements for invention and utility model patents respectively, it is clear that the inventiveness examination of utility model patents is different from the substantive examination of invention patents in essence.

Therefore, for the examination of obvious inventiveness of utility models at preliminary examination stage, the principles shown in the table below are expected to be followed:

III. The impact of the examination of obvious inventiveness of utility models on the practical level

According to the information disclosed by CNIPA, the main goal of introducing examination of obvious inventiveness in the preliminary examination stage of utility model patents is to improve the quality of examination, highlight the quality orientation, and strictly control the grant. Based on this policy trend, it is expected that utility model patents will be affected by the following aspects:

First, the grant rate may have a certain decline. This means that the novelty search before the application becomes particularly important. In order to ensure grant, the pre-filing prior art search should not only ensure novelty, but also cover the scope of obvious inventiveness.

Second, the requirement for inventiveness will be stricter, which may lead to a decrease in the number of applications. As more patents are likely to be rejected for lack of inventiveness, this will encourage applicants to choose more innovative technical solutions for utility model patent applications, or choose to apply for invention patents directly.

Third, the quality of utility model patents that have undergone the examination of obvious inventiveness will be significantly improved, and the validity will be stronger. This may make the enforcement of utility model patents more practicability. In particular, if some applications are granted with relative strict standards as similar as that in the invalidation procedures, the validity of utility model patents will be further improved and more effective for enforcement.

Finally, due to the introduction of new legal provisions for the examination of obvious inventiveness, and the possible involvement of prior art search and inventiveness examination opinions, the number of notifications of examination opinions is expected to increase, which in turn may lead to a lengthening of the examination cycle. This may put cost pressure and impact on applicants and agencies.

To sum up, strict examination of obvious inventiveness of utility model patents will have a significant positive impact on patent quality, promote the innovation and practicality of utility model patents. At the same time, this will also put forward higher requirements for the applicant's patent application strategy, and needs to conduct more in-depth technical innovation and patentability analysis before filing application, so as to protect the innovation more objectively and appropriately.