Practical Suggestions for Utility Model Prosecutions

Over the past few years, China has led the world in the number of patent applications filed, with Utility Model applications comprising a significant proportion those filed with the China National Intellectual Property Administration (CNIPA formally known as SIPO).

 

This is partly due to the fact Utility Model applications require no substantive examination, have a lower requirement for inventiveness, and thus have a lower overall application costs. 

 

These factors have made the Utility Model patent the application of choice for a large number of enterprises and individuals.  Unfortunately, it has also had the ancillary effect of permitting some unscrupulous entities to inflate their IP portfolio. 

 

To alleviate administrative pressures on examiners, and to combat these abuses, CNIPA has strengthened examination efforts and has started to conduct novelty searches, thus extending the application-to-grant cycle to the fullest.

 

Previously (before the strengthened examination efforts), when an examiner conducted an examination of a Utility Model application, there was only formality examination with no requirement for a novelty search. A novelty search is only conducted on “special occasions.”  Recently however, the internal examination guideline has changed this.  CNIPA, has reconfigured the novelty search requirements of the examiner by removing the constraints of the “special occasions”.

 

It is also notable that, in practice, if there are formality defects in the Utility Model application, the examiner would only issue a Notification for Rectification, rather than an Office Action (OA). After amendment of the application, the examiner will either continue the formality examination or grant the application. An obvious trend has emerged in recent years, whereby no formality defects in application means the novelty search will apply.

 

In the event an OA is issued indicating that the Utility Model does not possess novelty, the OA will inevitably include the reference document(s).  In response to this OA, the applicant could modify the independent claim to distinguish the claim from the reference document. In such cases, the examiner will no longer proceed with the search, and will acknowledge that the amended claim possesses novelty.

 

Alternatively, an applicant could refuse to modify the claims, and make the novelty argument based on the contents of the reference document(s) by distinguishing the technical features in the present application. It is evident that when a comprehensive analysis is presented in the response to the OA - especially when a distinguishable technical feature and corresponding technical effects can be identified - the examiner will generally relent.

 

Regardless of the actions taken by the applicant when facing an OA, additional effort is required.  As a patent attorney, it is important to find the most effective and least time consuming method to obtain patent protection for the client.  Therefore, one might be advised to purposely leave formality defects in Utility Model application documents, so as to avoid the hassle of responding to an OA altogether.