Second tier patents in Australia and China

/ Martin Pannall / Articles

Most users of the patent systems around the world will be familiar with the “standard” patent which can last for up to 20 years and requires that the invention claimed by the patent be new and involve some level of inventiveness. Fewer users however, are aware that there are other types of patents provided for in some countries. These types of patents, often referred to as “utility model patents” can have lower thresholds as to the level of inventiveness required, and are provided to allow protection for innovations that may not meet the higher requirements of the “standard” patent and thus not be otherwise protectable.

These types of patent systems are often also associated with a more simplified registration process which can provide cost savings in some cases, as well as provide a faster means of obtaining enforceable rights.

Australia is one of the countries that provide this second tier patent, referred to as an Innovation Patent. The Innovation Patent has a very low threshold requirement for inventiveness, and can essentially provide strong protection for inventions that may otherwise not meet the higher inventiveness requirements of the Standard Patent.

China is also a country that provides a second-tier patent system, referred to as a Utility Model Patent. The Australian Innovation Patent system and the Chinese Utility Model Patent system can be utilized to benefit patent applicants in protecting inventions that may otherwise not meet the inventive requirements of the Australian Standard Patent or the Chinese equivalent – the Invention Patent or who wish to obtain enforceable rights more quickly than the corresponding Standard or Invention patents.

Although the Australian and Chinese systems can be used together, there are some important differences between the two systems of which users should be aware.

Inventiveness Requirement:

The Australian Innovation Patent generally has a markedly lower level of inventiveness requirement over the Standard Patent. The invention can be protected, provided that the claimed invention is new and that the difference between what is claimed and what is known before (the “prior art”), provides “a substantial contribution to the working of the invention”.1 In fact, in some cases, the difference between the claimed invention of the Innovation Patent and the known prior art can even be obvious, provided that the difference provides the required contribution to the working of the invention.

The wording in the Chinese Patent law defining the levels of inventiveness required for the Utility Model Patent and the Invention Patent differs slightly, and the ability to combine multiple prior art documents to challenge inventive step is more restricted for Utility Model Patents than for Invention Patents. In practice however, the inventiveness requirements of the Chinese Utility Model Patent are closer to those of the Invention Patent than the inventiveness requirements for an Australian Innovation Patent are to those of the Standard Patent.

In particular, according to the guidelines for examination, at most two pieces of prior art documents can be used to challenge inventive step of a Utility Model Patent, while there is no restriction with respect to how many prior art documents can be used to challenge an Invention Patent. In practice, there is negligible difference in the inventiveness requirements of the two Chinese patent types. The inventiveness requirements of a utility model are that the utility model has substantive features and represents progress. The inventiveness requirements of an Invention Patent are that the invention has prominent substantive features and represents notable progress.2 When challenging inventiveness of a Utility Model, only prior art documents in the same field as that of the Utility Model Patent at issue can be considered. However, as for an Invention Patent, prior art documents in the same or similar field to that of the Invention Patent can be considered.

Examination:

When an Australian Innovation Patent application is filed, it only undergoes a formalities examination and then proceeds to grant usually within 4 to 8 weeks. The granted Innovation Patent may then simply be kept in its granted state for the remainder of its 8 year term. However, if the Innovation Patent is to be enforced, then substantive examination (Certification) must be requested. The Innovation Patent is then examined for the normal patentability requirements (with the lower inventive step requirement), before being Certified.

The Chinese Utility Model Patent undergoes a preliminary examination before proceeding to grant (usually completed within 6 to 18 months). This preliminary examination is more extensive than the formalities examination of the Australian Innovation Patent, but less extensive than the substantive examination carried out on the Chinese Invention Patent. In contrast to the Australian Innovation Patent, the Chinese Utility Model Patent does not legally require any further substantive examination to be enforced before a Court. However, in practice, the patentee of a Chinese Utility Model Patent is almost always required to provide a patentability evaluation report issued from the Chinese State Intellectual Property Office (SIPO) to the Chinese People’s Court during enforcement.  This report is similar to the Certification of Australian Innovation Patent.

Concurrent Innovation/Utility Model and Standard/Invention applications

One of the more powerful aspects of the Australian Innovation Patent system is that it is very flexible, and allows the filing of multiple Innovation Patents directly and/or as divisional patent applications from a pending Standard Patent application. While strict double patenting is not permissible, multiple Innovation Patents can be directed to different aspects of the same invention, provided that the scope of the claims of each patent does not overlap. It is also possible to retain these multiple Innovation Patents when the main Standard Patent is granted.

It is also possible to convert from a Standard Patent application to an Innovation Patent (under certain circumstances) and from an Innovation Patent Application to a Standard Patent application (under much more restricted circumstances).

While it is in some cases possible to have both a Chinese Utility Model and an Invention Patent directed to the same invention in China, there are severe restrictions relating to what can be done and the timing of filings. The rules governing this aspect can be quite complex and it is advisable to seek advice from a local Chinese patent attorney in each circumstance in good time to avoid irrevocable lapsing of rights.

Patentable Subject Matter

Almost any subject matter that can be protected under an Australian Standard Patent can be protected under an Innovation Patent. The only exception to this is plants and animals, which can be protected under Standard Patents but not under Innovation Patents.

The Chinese Utility Model Patent is more restricted, in that it can only protect a physical product. Methods, processes and chemical compounds for example, cannot be protected under a Utility Model Patent and such protection would need to be sought under the Invention Patent.

The table below compares some main features of each system:

 

AUSTRALIAN INNOVATION PATENT CHINESE UTILITY MODEL PATENT
Maximum term of 8 years Maximum term of 10 years
Patentable: physical products, methods, processes, chemical compounds Patentable: physical products only
Multiple patents?– very flexible Multiple patents? – more restricted
Examination – formalities examination to grant only Examination – preliminary examination to grant only
Enforcement – must request substantive examination (Certification) after grant before enforcing Enforcement – requires a patentability evaluation report (see “Examination” above for details.
Inventiveness requirement – very low Inventiveness requirement – potentially lower, but practically the same as the Invention Patent (but see “Inventiveness Requirement” above for details)
Number of claims – 5 Number of claims – no limit
Remedies upon successful enforcement – same as for Standard Patent Remedies upon successful enforcement– same as for Invention Patent
Conversion between Innovation Patent and Standard Patent? – yes, in some circumstances Conversion between Utility Model Patent and Invention Patent? – no.
Possible to enter national phase in Australia as an Innovation Patent from a PCT application? – no (although it is possible to file a divisional application of the pending international PCT application into Australia, or to enter national phase as a Standard Patent application and then either convert the Standard Patent application into an Innovation Patent or file a divisional as an Innovation Patent). Possible to enter national phase in China as a Utility Model Patent from a PCT application?Yes.
Possible to file as a Convention application in Australia claiming priority from a Chinese priority application? Yes – within 12 months of priority date. Possible to file as a Convention application in China claiming priority from an Australian priority application? Yes – within 12 months of priority date.

 

The above highlights some of the main differences and similarities between the Australian Innovation Patent and the Chinese Utility Model Patent systems, but it should be noted that there are many other subtle features of each system. Professional advice should be sought in each case to ensure that full advantage can be taken of both systems in each circumstance and to avoid inadvertent loss of rights.

  1. Australian Patents Act 1990, ss7(4)
  2. Article 22.3 of the Chinese Patent Law