Chinese Utility Model
and Design Patents as
Shields … and Swords
Managing Intellectual Property
Intellectual Property in China
Thomas T. Moga
May 2, 2013
Patents in China
Chinese approach: Utility model first, then design,
with invention patent
Experienced Chinese applicants know that utility
model and design patents are typically easier to
obtain in China than elsewhere and can be
granted for a broader variety of inventions
.
– .
Patents in China
Foreign, particularly US, approach: Invention
patent first, then design, then, far behind, utility
model

Even experienced US applicants aren’t aware
of flexibility of design patents in China and are
even less familiar with utility models; but some
of those who know about them are reluctant to
use them
.

.
Foreign Perspective:
Utility Model vs. Invention
While file a UMP application?
 Low cost
 Quick file-to-grant cycle
 May be suited for lower level invention (lower
threshold for “inventive step”)
 Unlike Design patent, scope of protection is defined
by claims, like an Invention patent
 Can be filed at same time with invention patent
 Overall allows for easy development of patent
portfolio for cross-licensing and other commercial
purposes
Foreign Perspective:
Utility Model vs. Invention
Why the US practitioner does not file a UMP application

American practitioners unfamiliar with UMP

Subject matter not suitable for product line of every
American company (e.g., can’t be used to protect
methods of producing pharmaceuticals)

Short term is not suitable for product line

“Productizing” invention doesn’t happen fast for all
companies, so fast grant, short term isn’t justified

Since is not substantively examined the American
company doesn’t know how much the patent is
worth
No US Parallel to UMP But Advantages
of UMP May Still be Achieved

The US has a parallel with China’s Invention Patent
(Utility Patent) and with China’s Design Patent
– Main difference: Design patents in US are
substantive examined, so pre-filing search is
important

The US has no parallel with China’s UMP
– But measures can be taken to speed up
prosecution and reduce costs

Undertake proper pre-filing search

Proper initial claim scope

Interview – a matter of right
Design Patents

Design Patent Protection in China is:
– Relatively inexpensive
– Relatively easy to obtain
– Relatively valuable
What Is A Design Patent In China?

Definition
– A "design" in the Patent Law refers to "any new
design of the shape, the pattern or their
combination, or the combination of the color with
the shape or pattern of a product which creates
an aesthetic feeling and is fit for industrial
application." (Rule 2, Implementing Regulations
of the Patent Law of the People's Republic of
China)
Why Are Foreign Design Patent Applicants So Far
Behind?

Inside information?
– Experienced Chinese applicants file about ten
times as many design patent applications in
China compared with foreign applicants
– They know that design patent protection is
typically easier to obtain in China than elsewhere
(e.g., the U.S.) and can be granted for a broader
variety of inventions

US design applications undergo substantive
examination and may take 1 to 2 years
Differences Between Chinese and Foreign Design
Patent Prosecution

Ease of registration
– In China, "[a]ny design for which patent right
may be granted must not be identical with and
similar to any design which, before the date of
filing, has been publicly disclosed in publications
in this country or abroad or has been publicly
used in this country…" (Article 23, the Patent
Law of the People's Republic of China)
Differences Between Chinese and Foreign Design
Patent Prosecution

Ease of registration (continued)
– Given grant without substantive examination,
China's system for granting design patents is
closer in practice to the system of copyright
registration in the U.S.
Differences Between Chinese and Foreign Design
Patent Prosecution

Greater variety of inventions covered
– Foreign applicants are constrained by their own
experiences and, as a result, anticipate not only
large prosecution bills but also limitations on
what can be protected
– Thus, design patent protection in the U.S. is
limited to protecting a thing having an
ornamental appearance (that is, the design
elements must be ornamental and not functional)
Differences Between Chinese and Foreign Design
Patent Prosecution

Greater variety of inventions covered (continued)
– In China, the range of items that have received
registrations is broader and includes design
patents granted on vehicle exhaust systems,
alternators, electrical components, and gear
boxes

These "design inventions" would not be good
candidates for patent protection in, for
example, the US
Differences Between Chinese and Foreign Design
Patent Prosecution
– Advantages

High speed grant, generally in a few months

As the design patent is based on drawings and
since there is no substantive examination the
cost can be very low

May offer wider spectrum of coverage than
design practice in the US

Again, allows for easy development of patent
portfolio
Differences Between Chinese and Foreign Design
Patent Prosecution
– Disadvantages

American practitioners familiar with design patents
(based on US experience) but not with Chinese practice
(low cost, broader coverage of designs)

Confusion remains as to drawing requirements (line vs.
CAD vs. photos); more than inconvenient, can be fatal

Confusion remains as how much “function” can be
represented in design

Enforcement requires “exact copy” and is thus
frustrating to rights holders

Registering with Customs Office is itself inadequate must register with Evaluation Report from SIPO
THANK YOU !
E-Mail: tmoga@shb.com
Phone: 001-202-639-5622