• Steve Davey

Is the Australian Innovation Patent the same as the Chinese Utility Model Patent?


Both Australia and China have two grades of patents. The top grade is harder to obtain than the lower grade, but the top grade lasts longer.

The top grade patent in Australia is called the ‘Standard Patent’ and the lower grade patent is called the ‘Innovation Patent’.

The top grade patent in China is called the Invention Patent and the lower grade is called the ‘Utility Model Patent’.

Details of the similarities and differences between each type of patent are follows:

WHAT ARE THE TERMS OF THE PATENTS?

Australian Innovation Patents: 8 years

Chinese Utility Model Patents: 10 years.

HOW MANY CLAIMS CAN YOU HAVE?

Australian Innovation Patents: 5.

Chinese Utility Model Patents: No limit.

CAN THE PATENTS COVER ANY SUBJECT MATTER?

Australian Innovation Patents: 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.

Chinese Utility Model Patents: The Chinese Utility Model Patent only protects physical products. 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.

WHAT ARE THE INVENTIVENESS REQUIREMENTS?

Australian Innovation Patents: The Australian Innovation Patent has a significantly lower level of inventiveness requirement than the Australian 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”. 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.

Chinese Utility Model Patents: There is little 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. 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. 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.

CAN YOU HAVE MULTIPLE PATENTS FOR THE SAME INVENTION?

Australian Innovation Patents: The Australian Innovation Patent system allows the filing of multiple Innovation Patents directly and/or as divisional patent applications from a pending Standard Patent application. While 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.

Chinese Utility Model Patents: 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.

CAN YOU IMMEDIATELY ENFORCE THE PATENTS?

Australian Innovation Patents: The applicant must pass substantive examination of the granted innovation and obtain certification before the innovation patent can be enforced.

Chinese Utility Model Patents: Requires a patentability evaluation report.

WHAT REMEDIES ARE AVAILABLE UPON SUCCESSFUL ENFORCEMENT?

Australian Innovation Patents: Same as for Standard Patent.

Chinese Utility Model Patents: Same as for Invention Patent.

IS IT POSSIBLE TO CONVERT BETWEEN HIGHER AND LOWER GRADES OF PATENT?

Australian Innovation Patents: 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).

Chinese Utility Model Patents: No.

IS IT POSSIBLE TO ENTER THE NATIONAL PHASE IN THE LOWER GRADE PATENT FROM A PCT APPLICATION?

Australian Innovation Patents: It is not possible to enter the Australian national phase as an innovation patent. However, 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.

Chinese Utility Model Patents: It is possible to enter the national phase in China as a Utility Model Patent from a PCT application.

WHAT IS THE EXAMINATION PROCESS?

Australian Innovation Patents: 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: these 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.

Chinese Utility Model Patents: 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.

CAN YOU HAVE CONCURRENT HIGH AND LOW GRADES OF PATENT?

Australian Innovation Patents: The Australian Innovation Patent system allows the filing of multiple Innovation Patents directly and/or as divisional patent applications from a pending Standard Patent application. While 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.

CAN YOU HAVE CONVERT A LOW GRADE PATENT TO A HIGH GRADE PATENT AND VICE VERSA?

Australian Innovation Patents: 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).

The Chinese Utility Model Patent: 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.

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