Written by Haoyu Zhou (Elliot)

 

According to the newly published <Chinese Patent Examination Guideline 2023>, patent examiners could examine whether utility model applications are apparently lack of inventive step, in addition to the apparently lack of novelty. This new grounds of rejection will officially take effect on January 20, 2024.

 

Some patent practitioners believe this change shows the resolution of the CNIPA to seriously crack down and reduce utility model patent filings, especially in view of the fact that the CNIPA also publishes <Regulation of Patent Filing Behavior> on the same day. Some are even of an opinion that introduction of “apparently lack of inventive step” ground will change utility model patent prosecution into a pseudo substantive examination, and such will likely kill a large number of utility model applications, and they believe that the grant rate of utility models will drop considerable in 2024.

 

However, we think these opinions are over-interpretation of the impact of “apparently lack of inventive step”. According to our prediction, the new ground just aims to target bad-faith and low-quality utility model applications, but not intend to target bona fide utility model filings.

 

As a matter of fact, “apparently lack of inventive step” ground has already been used by the CNIPA’s examination division since late 2022. Typically, if claims are drafted too broad, especially if claims look like a simple combination of components well-known in the art, the examiner may raise such a ground of rejection. According to our observation, just like how the CNIPA raise “apparently lack of novelty” ground against utility models in the past 13 years, examiners are not obliged to cite any prior art when they raise “apparently lack of inventive step” rejection. The examiner may simply issue “apparently lack of inventive step” rejection based on his/her intuitions and feelings. This makes sense because if examiners would have to cite prior art for raising “apparently lack of inventive step”, such is no more a part of “preliminary examination” procedure, as required by the utiliy model examination procedure.

 

According to our experience, applicants should not worry too much about the addition of “apparently lack of inventive step” ground against utility models, as the overall inventiveness standard for utility models are not changed under the new law and regulations. Utility models’ inventiveness requirement remains to be lower than the inventiveness requirement for invention patents. According to the <Chinese Patent Examination Guideline 2023>, the inventive step of invention patent applications could be assessed by one, two or more than two prior art documents, whereas the inventive step of utility model applications could be assessed by just one or two prior art documents. Only when a utility model is a simple piecing-together of prior art, its inventive step can be assessed by more than two prior art documents. In other words, the addition of “apparently lack of inventive step” ground in utility models will not change the fact that utility models are easier to be allowable than invention patent applications from the perspective of inventiveness standard.

 

If you have any questions in relation to this topic or any other patent stories you want to hear, please contact me (Elliot Zhou) at patent@foundin.cn.

 

Partner, Patent and Design Attorney, Lawyer