Chinese Invention Patents & Utility Model Patents

Post Reply

Bradford
Posts: 5
Joined: Thu Mar 12, 2020 3:18 pm

Chinese Invention Patents & Utility Model Patents

Post by Bradford » Mon Jun 22, 2020 1:13 pm

Anecdotally at least, it is common practice for applicants to apply for a Chinese “invention patent” and a Chinese “utility model patent” at the same time for the same invention. A kind code for publications of Chinese “invention patent” applications is “CNA” and a kind code for publications of Chinese “utility model patent” applications is “CNU”. The simple queries “pn=CNA” and “pn=CNU” each yield millions of results. However, the query “pn=CNA and pn=CNU” yields zero results.

This seems to indicate that a Chinese “invention patent” and a Chinese “utility model patent” filed at the same time for the same invention do not count as members of the same family. Is that correct? (One example is PN=CN204290136U and PN=CN104538874A, which apparently relate to the same invention but do not appear in the same family – though CN204290136U appears as a cited document for CN104538874A. The “invention patent was rejected but the fate of the utility model is unclear. A similar example is pn=CN104538874A and pn=CN20481260U where the “invention patent” was rejected but the “utility model patent” was granted.)

If this is correct, would there be any way to associate “invention patent” and “utility model patent” in one family, or some work around to achieve a similar result?

If this issue has already been addressed I would be very grateful if you could direct me there.

Many thanks in advance


Patent Information Marketing
Posts: 157
Joined: Fri Mar 03, 2017 1:16 pm

Re: Chinese Invention Patents & Utility Model Patents

Post by Patent Information Marketing » Thu Jun 25, 2020 7:34 am

Dear user,

Thank you for your interesting observation. We have addressed your question to the experts in family building and will come back to you as soon as possible.
Kind regards

Patent Information Marketing


asiainfo
Posts: 1
Joined: Fri Jun 26, 2020 11:07 am

Re: Chinese Invention Patents & Utility Model Patents

Post by asiainfo » Fri Jun 26, 2020 12:58 pm

Dear user,

Indeed, you are right, it is a common filing strategy in China (mainly by Chinese applicants) to file a patent (patent of invention) and an utility model (patent of utility model) application for the same invention. The Chinese patent law is one of the very few patent acts which allow dual filing (in most jurisdictions only the change from one into the other is stipulated).
Conditions for dual filing is only the same invention (not the same wording of the invention) and the same filing date.
As also the wording of the title, the way inventors and/or applicants are mentioned etc. can vary, and as also application number, publication date and number, procedures etc. vary, it is very difficult to pair them . if not manually. And even that is difficult.
If the patent is being granted, the utility model has to be withdrawn. If the patent application is being rejected, the utility model (only registration procedure) is staying in force (if the annual fees are being paid).
To proceed to your actual question, depending on the definition of patent family (claiming the same priority? both claim usually only themselves as self priority....), yes, one could argue they should be in the same family, but this is very difficult to realise.
In any case, many IP users are very interested in this topic, and therefore there are - to my knowledge - already quite research projects, how one could automatically pair corresponding CN patents and utililty models.


Bradford
Posts: 5
Joined: Thu Mar 12, 2020 3:18 pm

Re: Chinese Invention Patents & Utility Model Patents

Post by Bradford » Mon Jun 29, 2020 4:04 pm

Many thanks for the replies. I can see that this issue doesn't have an easy resolution.


Post Reply