Manyi SONG
Chinese Patent Attorney 
Attorney-at-Law

As more things are considered and stricter standards are applied in the examination of utility model applications, it has become not rare that some utility model applications are rejected. How to deal with a rejection for a utility model application? Should the applicant request reexamination or file a new application? What differences are there between the two ways? How to choose between them? Is there anything the applicant should note? Let’s go ahead.

In China, a utility model application is only subjected to a preliminary examination, not subjected to an examination as to substance. Also, a utility model application costs less than an invention application. Utility model applications are therefore popular among applicants. In 2021, the CNIPA received 2.85 million utility model applications.

To build China a powerful IP country, the IP industry of China is boosting its pace towards the high-quality goal. The CNIPA is constantly endeavoring to improve the quality of patents. In such a context, the CNIPA is applying increasingly stringent criteria to whether utility model applications are in compliance with the Chinese Patent Law, especially Article 22.2 (novelty requirement), Article 22.4 (industrial-applicability requirement), Article 26.3 (sufficient-disclosure requirement), and Article 26.4 (support and clarity requirements for claims).

It is no longer uncommon that some utility model applications are rejected. We are going to discuss how to deal with a rejection for a utility model application, how to choose between the two approaches of requesting reexamination and filing a new application, what differences exist between them, and what the applicant should pay attention to.

1. Request Reexamination

Article 41 says as follows: A patent applicant, if unsatisfied with a decision to reject the application that is made by the patent administration department of the State Council, may files a request for reexamination of the application with the patent administration department of the State Council within three months from the date of receiving the decision. The patent administration department of the State Council, after reexamining the application, makes a reexamination Decision. The patent applicant, if unsatisfied with the reexamination decision, may file a lawsuit with the people’s court within three months from the date of receiving the reexamination decision.

If the applicant thinks that the decision of rejection is unjustified or that the application document, after being amended, will meet the requirements for the grant of a utility model patent, may choose to request reexamination. The reexamination proceeding provides the applicant with an opportunity to eliminate defects of the application document by amending it. Also, the applicant, if disagreeing with the grounds on which the examiner rejects the application, may bring forth arguments against those grounds, in the hope that the collegial panel can made a fair judgement.

After the application undergoes the interlocutory examination by the examiner and the collegial examination by the panel, the department in charge of reexamination and invalidation examination under the CNIPA may make a reexamination decision to revoke or uphold the decision of rejection. The applicant, if unsatisfied with the reexamination decision, may file a lawsuit with the court.

In the reexamination proceeding, the applicant may amend the application document, but the amendment is subject to Article 33 of the Chinese Patent Law—which requires the amendment to incur no new patter—and must serve the only purpose of eliminating defects pointed out in the Decision of Rejection or the Notification of Reexamination.

If the 12-month priority period for a utility model application has expired when the application is rejected, in particular the contents of the utility model application have been disclosed by another application (e.g., by an earlier application of which the utility model application claims the benefit, or by a foreign counterpart of the utility model application), or the contents of the utility model application have been disclosed in other forms (e.g., in the form of a product of the utility model that has been shown in an exhibition or another place, or has entered the market), then it would be better to request reexamination instead of filing a new application.

2. File a new application

Filing a new application is an alternative to requesting reexamination. For instance, when a utility model application includes subject matter that is not eligible for a utility model patent but is eligible for an invention patent, the applicant may choose to file a new application for an invention patent. When a utility model application is found to have a defect such as insufficient disclosure and typos, the applicant may choose to file a new utility model application based on the amended application document.

Filing a new application, in comparison with the reexamination proceeding, not only allows the applicant to resect an application type, but also provides the applicant with freedom to amend the application document. The applicant can thus be freer in amending the application document with the aim to eliminate defects and perfect the application. Also, the applicant gets an opportunity to include an improved technical solution into the application document.

If the 12-month priority period for a utility model application has not expired when the utility model application is rejected, the applicant may claim the benefit of the filing date of the earlier application. In this way, even if the contents of the utility model application have been disclosed by another application or in another form, the refiled application will not be in an adverse positon in terms of novelty.

3. Summary

If the grounds on which a utility model application is rejected are clearly unjustified or if the defects due to which a utility model application is rejected can be eliminated by an amendment that will not incur new matter, the applicant may consider filing a request for reexamination of the utility model application. On the other hand, if the application document does have defects pointed out in the Decision of Rejection, and the defects cannot be easily removed by an amendment that will not incur new matter, the applicant may consider filing a new application based on the amended application document.

The applicant, in choosing between the two ways, has to note whether the 12-month priority period has expired and whether the contents of the utility model have been disclosed by a different application or by a different approach.