IP Newsletter Issue 27 (2018-07-12)
State Intellectual Property Office (SIPO) of P. R. China Conducts Strict Examination on Utility Models

   The quantity of patent applications increases, and the SIPO starts to be focus on quality!

   Now examination on utility models is conducted strictly, and examination cycle is enlarged to 7-14 months.

   It eventually becomes the past that “utility models surely would be all authorized” as widely spread in this industry…

   In order to put “Implementation Plan of Patent Quality Improvement Project” of SIPO into practice, strengthen examination on utility model applications, Utility Model Examination Department of the Patent Bureau starts with two aspects of hardware and software, to improve quality of examination work. The Utility Model Examination Department, on the one hand, promotes improvement and optimization of auxiliary retrieval capacity of computer retrieval report system of utility model (hereinafter called computer retrieval report system) by virtue of information-based means, on the other hand, formulates retrieval training program, so as to promote examiners to continuously improve retrieval capacity.

   In recent years, applications of utility model continuously increase, which presents greater challenge for examination resources and examination capacity of the utility model. “In this case, it is particularly important to make the service efficiency of the computer retrieval report system of utility model actually work”. According to related officials of the utility model examination, since 2016, the push rate of effective citations by the computer retrieval report system of utility model per month is maintained above 15%, which plays an important role for improving patent examination quality and increasing patent examination efficiency.

   In addition, in order to improve examiners’ “soft power” of retrieval skills, the Utility Model Examination Department formulates a medium and long-term plan of facilitating retrieval capacity, carries out training of retrieval skills within the department, and organizes examiners to participate in retrieval capacity evaluation tests. Up to the end of 2017, in the Utility Model Examination Department, personnel who passes junior retrieval level test occupies 72.86% of all the department examiners; personnel who passes senior retrieval level test occupies 27.14% of all the department examiners. The retrieval capacity of the examination team is increasing constantly.

   Our company, as an agency, first of all, seriously implements the patent agent quality improving project which is one part of “Implementation Plan of Patent Quality Improvement Project”, conducts series of agent works of new application drafting, translation, filing and forwarding of subsequent OA, responding, and so on, always in strict accordance with customers’ entrustment, based on the rule of “Customer First”, and timely fine tunes our agent works according to the trend variation of patent examination. Meanwhile, during procedures of handling OA of utility model patent applications, we also have sensed some detailed variations in the utility model patent examination, specifically as follows:

   1. The past utility model examination has evaluation of formal deficiencies and other substantive problems as the majority. This year, examination opinions of evaluating substantive novelty by reciting retrieved citations increase obviously.

   2. With that the technical solution belongs to replacement of common means as the reason, the situation that is not completely disclosed by citations is evaluated as the deficiency of novelty, while substantially, this category of distinguishing features should be evaluated from inventiveness. This kind of examination opinion increases, such that the difficulty of answering OA rises.

   3. To deal with the conflict between strict examination and examination cycle, the proportion of sending “Rejection Notification” also rises, showing insufficient rational analysis to the content stated by the applicant when answering OA, which is particularly reflected in application of individual applicant more obviously.

   4. China’s examination on the utility model patent application would be strict constantly, and it is more difficult to obtain authorization, thus requirement on drafting of the utility model application increases.

   In addition, in order to improve examination quality of utility model, SIPO conducts strict examination on utility models while enlarges examination cycle to 7-14 months.