中国Court CasesCourtsEIP Coffee BreakEIP Patent 101 CornerprosecutionSupreme People's Court
2021年8月19日

Do Invention and UM Patents Filed on the Same Day Rise and Fall Together?

Snippets of Court Cases, Provisions, and Key Observations about China’s IP Landscape

Seminal Cases by the SPC

Recently, the Intellectual Property Division of the Supreme People's Court (SPC) issued a list of seminal (精品) cases. Although China is not a case law country, such seminal cases issued by the SPC have high guiding impact for similar cases in the future, so they are still worthy of attention.

One of the seminal cases ((2020) 最高法知民终699号) is very interesting. It involves a set of “same day applications”, i.e. an invention patent and utility model (UM) patent directed towards the same invention filed on the same day. The key issue is: if the invention patent application is rejected, what happens to the corresponding granted UM?

A Bit of Background

China allows patent applicants to apply for Invention and UM patents for the same invention on the same day (same-day applications). Typically the UM grants first (within 5-8 months), allowing the patentee to initiate license agreements or enforcement actions based thereon. Then later, when (and if) the time-consuming and costly invention application finally proceeds to grant, the applicant can obtain an invention patent’s longer 20-year protection term by giving up the UM patent (10 year term). Applicants welcome this dual application strategy, since it provides fast and comprehensive protection for product inventions.

Same Day Applications

In this seminal case, the applicant had obtained a granted UM earlier, but the corresponding invention patent application had been finally rejected, even after a re-examination request and administrative suit. Later the patentee initiated an infringement lawsuit based on the same-day UM patent which protects an identical technical solution. The first instance held in favor of the patentee. The SPC revoked the judgment of the first instance and held that in this case, the patent right for the utility model should be questioned.

Generally speaking, if a same-day invention application is rejected for lacking novelty, then the related same-day UM patent must also lack novelty, and thus will not meet the grant requirements. However, if the invention application is rejected for lack of inventiveness, then the judge cannot directly arrive at the same conclusion, since inventiveness requirements for invention patents and UMs are different.

We believe that this judgment is reasonable and will effectively reduce litigation costs in similar situations. We are of view that this judgment will not have significant impact on the same-day filing strategy for high-quality inventions.

You may refer to our previous article regarding same-day filing strategy.

(http://ipc.court.gov.cn/m/detail.html?id=1410)

About the Authors

Yolanda Wang is a Principal, Chinese Patent Attorney, and Chinese Patent Litigator at Eagle IP, a Boutique Patent Firm with offices in Hong Kong, Shenzhen, and Macau.

Jennifer Che, J.D. is Vice President and Principal at Eagle IP, a Boutique Patent Firm with offices in Hong Kong, Shenzhen, and Macau.

This article is for general informational purposes only and should not be considered legal advice or a legal opinion on a specific set of facts.

其他文章

China’s Newest Examination Guidelines: Inventive Step for Biological / Life Science Inventions (Part III)

2021年4月30日
This is Part III of a three-part series summarizing the Examination Guidelines that were released by the CNIPA on January 15, 2021, one year to the date of Phase 1 of the US and China Economic and Trade Agreement. That agreement included specific provisions where China "shall permit pharmaceutical patent applicants to rely on supplemental […]

How to Protect a Crystal Form (Polymorph) Patent in China

2025年6月4日
Crystalline forms are critical to pharmaceutical patents, offering extended protection for improved stability, bioavailability, or manufacturability. However, securing such patents in China has grown increasingly difficult due to the China National Intellectual Property Administration (CNIPA)’s strict patentability criteria. Unlike the U.S. or Europe, where structural novelty or problem-solving utility may suffice, China demands quantifiable evidence of […]

New Remedy in China for Fixing "Errors" in a Patent Application: Incorporation by Reference

2024年3月21日
Background As mentioned in our earlier article, the Implementation Regulations of the Chinese Patent Law (“Regulations”, similar to the CFR in the US) were approved in November, and the CNIPA finally made public the full text of the Regulations just before the arrival of the New Year. At the same time, the CNIPA also released the new […]

IP Strategies for the Newly Released Implementation Regulations of the 4th Amendment of the Chinese Patent Law: Part 3: The 15-Day Mailing Period is Mostly Going Away

2024年2月28日
A Closer Look at the New Presumed Receipt Date Calculation Background China has finally released the long-awaited Patent Law Implementation Regulations (“Regulations”) and associated "Patent Examination Guidelines" (“Guidelines”, similar to the United States' MPEP) which provide further clarity and details of the new Chinese patent law. Today’s article will focus on changes that impact how […]

我们的过去活动

Top crossarrow-right