China: Utility Model Practice In China

Invention, utility model and design are the three types of patent rights available in China. Invention patent is equivalent to the utility patent in the U.S. Utility model finds its root in European, in particular, German practice. The utility model has been used extensively by Chinese applicants whereas foreign applicants do not seem to favor it at all.

According to statistics from State Intellectual Property Office (SIPO), in 2010, Chinese applicants filed 407,238 (99.4%) utility model applications while foreign applicants only filed 2,598 (0.6%). The accumulative numbers from April 1985 to December 2010 are respectively 2,397,523 (99.3%) and 16,801 (0.7%). A possible explanation is that foreign applicants from countries where no utility model system exists, e.g. the U.S., may not be familiar with it. In addition, the uncertainty of the validity of utility models makes it a second tier patent devalued by some practitioners.

However, utility model patents in China may offer applicants and patent owners strategic advantages in terms of acquiring and enforcing patent rights in China.

"Utility model" means a new technical solution relating to the shape, the structure, or their combination, of a product, which is fit for practical use. In other words, utility model patents protect products, but not methods. A Chinese utility model is valid for a term of 10 years from the filing date.

A utility model application can be filed as a first filing or claiming priority from a previous utility model or invention application. It can also be filed as a national phase of a PCT application. Upon filing an application or entering national phase of a PCT application, either utility model or invention must be chosen. It is not possible to change from one type to the other later during prosecution. It is not possible to branch out a utility model application from an invention application, as in Germany. However, for priority purpose, a patent for invention can claim priority from a utility model and vice versa.

A utility model patent is usually granted much quicker than an invention patent. Under the current electronic examination system in SIPO, a utility model patent can be granted as quickly as 3 months whereas an invention needs average of two and half years. There is no substantive examination for utility model. However, the Chinese utility model system is not a simple registration system either. An application has to go through "preliminary examination" during which formality and claim languages, among other things, are checked. For example, a utility model application must have at least one drawing showing the shape or structure of the product. Otherwise, the application will not even get a filing receipt. During prosecution, it is usually not allowed to make changes to the drawings. Features related to methods are not allowed in claims, even if the subject of the claims is a product. An electrical circuit can be protected by utility model. However, claims can only include fixed connection relationship between the components. Features like algorithm or logic are not allowed.

Even though Chinese utility model practice has lots of limitations, it does allow an exception to double patenting which may interest many applicants. In particular, Chinese patent law allows an applicant to file a utility model application and an invention application for the same subject matter on the same day. The utility model is usually granted first and when the invention application is ready to be allowed and the utility model is still valid at that time, the applicant is allowed to abandon the utility model and choose the invention patent. The utility model is then abandoned on the issue day of the invention patent.

This effectively extends the period during which an enforceable patent right is available. As the cost of prosecuting and maintaining a utility model is far less than that for an invention, filing two applications will not significantly increase the cost to the applicant. For a foreign applicant, since the text of the applications are the same, translation cost will basically be the same as filing only one application.

However, the following points need to be noted by foreign applicants to take advantage of this rule. First of all, the "same day" herein refers to the same day on which two applications are actually filed in China. Hence, this rule applies when both applications are the first filings. This rule also applies when both applications are filed in China on the same day and claim priority through Paris convention from same previous foreign application(s). If they are not filed on the same day or have different priority dates, under the current Chinese patent law, the earlier one constitutes a conflicting application against the novelty of the latter.

It is to be noted that one cannot take advantage of this rule when it files a PCT international application and a Chinese utility model application on the same day, even if both are filed with SIPO, since the type of application cannot be determined at the time of filling the PCT application and it is not certain the PCT application will enter Chinese national phase. This rule does not apply when an applicant files a Chinese utility model application and enters national phase of a PCT application on the same day, as in this case, the priority dates will be different. As a matter of fact, the applicant may end up with no patent, as the PCT application will destroy the novelty of the utility model in invalidation proceedings and most likely, the utility model will be granted first which bars the PCT national phase application from being granted on the ground of double patenting.

Besides the above-mentioned rule, another interesting aspect of Chinese utility model practice is that utility model has a patentability standard lower than that for invention, in terms of obviousness. The Guidelines for Examination prescribe that usually only one or two pieces of prior art shall be used to assess the obviousness of a utility model and examiners usually only consider the references in the same technical field rather than similar or related technical fields, as they do for an invention. Thus, in practice, it is difficult to invalidate a utility model on the ground of obviousness.

According to statistics from SIPO, up until August 31, 2008, approximately 25% of invention patents were declared completely invalid compared with 33.3% of utility models – a less than significant difference. In fact, many utility models filed by Chinese applicants are not drafted by sophisticated professionals and often leave little room for the patentee to make amendments during invalidation proceedings. The statistics for the utility model could have been even better otherwise.

Since utility models are not substantively examined, according to the new Chinese patent law, when a patentee wants to enforce a utility model against an alleged infringer, the infringement courts or administrative authorities usually request the patentee to provide a "patent right evaluation report". The evaluation report, which must be done by SIPO, includes full examination results and comments. Although courts may consider the type of patents infringed when determining damages, this does not necessarily mean a patentee of a utility model cannot get high amount of damages, as shown in cases like Chint v. Schneider.

Chinese applicants seem to favor utility models as they are cheap and fast to get and maintain while offering an enforceable right that may not be easily invalidated. Foreign applicants may also want to consider filing utility model applications for strategic reasons. Foreign applicants usually file Chinese applications claiming priority from foreign applications, either through the Paris Convention or PCT route. In most cases, the applicants have an idea of the patentability of their inventions by the time of filing applications in China, from PCT search report, examination report or foreign examination results. For those applications that may have difficulty in terms of obviousness, the applicant could strategically choose to file utility model applications in China. Then, for the "less inventive" inventions, applicants could get a utility model patent, which is difficult to be invalidated for obviousness.

For the same reason, even if an applicant missed the priority period and have disclosed its invention, it may still consider filing a utility model in China covering any slight improvement made to the invention, and end up with a valid utility model patent.

Moreover, the utility model is a quick and cost efficient way to protect products with short life cycles. Invention patents may not be suitable for protecting such products since they take a couple of years to grant, whereas utility models can offer protection much quicker and the 10-year term may well be long enough.

In addition, the utility model is also suitable for "urgent protection". Where a product is to be launched in China or abroad quickly and where there is no time for sophisticated drafting, a utility model application can be filed with possibly narrow scope of claims which in extreme cases may only cover the actual product. For multinational companies with inventions coming out of China, this could be particularly useful. In this sense, it is better than US provisional applications, as it results in an enforceable right.

Lastly, applicants could strategically choose to file both invention applications and utility model applications. As mentioned above, the applicant could enjoy an extended period of time during which an enforceable right is available. Furthermore, applicants are more than likely to obtain claims in utility model patents and invention patents, with different scope, which under current Chinese practice, is not considered double patenting. In this case, the applicants do not need to abandon the utility model and could keep both the utility model and the invention. The applicants are then in a strategically advantageous position as the utility model may stand attack of validity even with broader scope, due to different standards of obviousness for utility model and invention.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:
  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.
  • Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.
    If you do not want us to provide your name and email address you may opt out by clicking here
    If you do not wish to receive any future announcements of products and services offered by Mondaq you may opt out by clicking here

    Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

    Use of

    You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


    Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

    The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


    Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

    • To allow you to personalize the Mondaq websites you are visiting.
    • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
    • To produce demographic feedback for our information providers who provide information free for your use.

    Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

    Information Collection and Use

    We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

    We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

    Mondaq News Alerts

    In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


    A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

    Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

    Log Files

    We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


    This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

    Surveys & Contests

    From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


    If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


    This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

    Correcting/Updating Personal Information

    If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

    Notification of Changes

    If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

    How to contact Mondaq

    You can contact us with comments or queries at

    If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.

    By clicking Register you state you have read and agree to our Terms and Conditions