Dr. Jason J. XUE | Mar 18, 2020

The number of patent applications in China ranks first around the world for some consecutive years. In 2019, the total number of patent applications for invention, utility model and design reached nearly 4.4 million in China. Among them, the number of applications for utility model reached nearly 2.3 million, which takes up over 80% of the total volume in the world. This kind of patent shows certain "Chinese characteristics".

The characteristics of Chinese utility models are mainly in the following three points:

1) No substantive examination
It is a registration system without substantive examination in the patent prosecution. Nowadays, more than 20,000 new enterprises are registered per day in China. Utility models, which are relatively easier to be granted, have helped many small and medium-sized enterprises achieve a breakthrough in their own intellectual property rights, from 0 to 1.

2) Prescribed patentable subject matter
The definition of utility models in Chinese Patent Law is new practical technical solution of the shape, the structure or their combination of a product. The Guidelines for Patent Examination stipulates that "the so-called shape refers to the certain spatial shape that a product has and can be observed from the outside."

3) Lower standard of inventiveness
Article 22.3 of the Patent Law stipulates that “inventiveness" means that, as compared with the prior art, the invention has prominent substantive features and represents a significant progress, and that the utility model has substantive features and represents a progress.” It is obvious that compared to inventions, the Law has a lower requirement for inventiveness of utility models. In the actual examination, only one reference document or two combined ones can be used to evaluate the inventiveness of the technical solution in the utility model claims, while there is no limit on the number of reference documents for evaluation of the same for inventions. However, the protected implementation right is the same between inventions and utility models. Then, we can infer that for granted inventions and utility models, if the technical solution is the same, the stability of utility models is better than that of inventions.

From the definition of utility model, it can be seen that it mainly refers to mechanical devices or other macro-products. Micro-products, such as nano-devices and polymer, do not belong to the patentable subject of utility models. Does it mean that it is not possible to apply for utility models in the field of microscopic chemistry? In fact, The Guidelines for Patent Examination stipulates that "the composite layer, such as a carburized layer and an oxide layer, can be regarded as the structure of a product". However, it should be noted that if the claims contain improvements on not only the shape and the structural features, but also the material itself, it would not belong to the patentable subject of utility models.

So what is the current status for grant of utility models in the field of chemistry? There are more than 1.64 million granted utility models whose application dates fall in 2018 in China. The number of granted utility models in IPC group Part C (chemistry, metallurgy) is 75,497, among which there are a huge number of patents for mechanical devices which used chemical or biological materials in it. But the number of granted utility models in the specific group of C09J7/29 (layer materials, adhesives) is 951. When we make a cluster analysis for the first 10,000 utility model patents in Part C, we get the results as shown in below chart. Among these figures, there are 428 granted utility model patents in the fields of substrate layer/pressure-sensitive adhesive layer/protective film. To be more specific, it includes not only products with various coatings and layered structures, such as adhesive tape, plates, glass and silicone tape, but also products such as rubber foam, microcapsules.



It can be seen that utility model can also be applied for and granted in chemistry, especially in the field of material science, when the contribution to the prior art falls in macro structure and/or shape. If the invention is based in the material itself, it is better to apply for invention patent. According to the Chinese Patent Law, it is allowable to file both invention application and utility model application for the same invention. But in that case, accelerated and priority examination are not allowed, and the examination for the invention patent application will be postponed.