Written by Mr. Jian Xu, IP Expert and collaborator of the China IP SME Helpdesk.
Utility model is largely neglected by many foreign applicants, but it can be used strategically to enhance the protection of your products in China.
The advantages of an invention patent are that a) it has a longer period of protection for 20 years from the application date, and b) it is a more stable right as it is substantively examined. However, the time taken for examination is relatively long. An invention patent is usually not granted until 2-4 years after filing.
Utility model is only valid for 10 years from the application date and is deemed as lower inventiveness compared with an invention patent. However, it can be obtained quickly, usually within 1 year from filing, as there is no substantive examination for it. For time-sensitive commercial world this can be an advantage.
In terms of enforceability, the invention patent, having been substantially examined, is stronger than the utility model, and can usually result in higher damages. However, utility model is quick and easy to get, so it can be desirable if the applicant wants quicker protection in China.
Therefore, it is advisable to apply for both the invention and utility model for the applicant's key products in China. In this way, the applicant can obtain quick protection of its product through the utility model as it is usually granted within 1 year from filing, and can still achieve stronger protection of its product later when the invention patent is granted. This avoids the situation that the applicant having to wait for the grant of the invention patent before they can take action against potential infringers. Another benefit is that if the invention patent is rejected after substantive examination, the applicant still has some protection through the utility model. It is possible that the utility model patent is stable even if the invention patent is rejected, as the inventiveness required for the utility model is lower than for the invention patent.
- Publication date
- 25 January 2022