Article 9 of the Chinese Patent Law stipulates that "where the same applicant applies for a utility model patent and an invention patent with regard to the same invention on the same day, if the utility model patent acquired earlier is not terminated yet and the applicant declares his waiver of the same, the invention patent may be granted."
This law refers to the very unique "one case, two requests" system in the Chinese patent application process, which has attracted the attention of many applicants and is widely used in practice.
Recently, there have been policy adjustments to this system. That is to say, after the utility model application filed on the same day is granted, the invention application will then proceed to enter substantive examination four years later. There is no official document on the adjustments, but at a public meeting in July this year, it was confirmed by senior officials of the China Patent Office.
In the specific implementation of the new policy, the corresponding invention application, of the utility model application of the same day, will be marked in the Patent Office of China's examination system so as to postpone its examination. The policy will affect all applications submitted since 2018.
It should be noted that for the fields where examination is fast, the impact is relatively small. After waiting for the cases which are placed at the front of the examination queue to be handled, the invention application may enter the substantive examination procedure earlier even if a utility model application was filed on the same day. However, in the fields with a heavy examination backlog, the waiting time for the invention application to enter examination will certainly be longer. It is expected that this system will remain in place for a long time.
In addition, prioritized examination and PPH are not available for the invention application of "one case, two requests". However, prioritized examination should be still available for the utility model application, and a request for prioritized examination can be submitted for the utility model application. A current uncertainty is whether the applicant voluntarily withdrawing the utility model application will lead to the invention application's delayed examination mark being revoked. This is not known at present and needs further confirmation.
In view of the above policy adjustments, applicants need to act accordingly. If an applicant wants to get an invention patent granted as soon as possible, they need to carefully consider whether to apply using the "one case, two requests" system. On the other hand, if the applicant is in no rush to obtain granting, they can use this policy to obtain a longer waiting period, observe the development trend of the market and adjust the protection scope of the claims.
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.