Can utility model patent still be protected after invention rejection?

It is a common practice for the same applicant to apply for invention patents and utility model patents on the same day for the same technical solution (with the same technical solution and protection scope), in order to obtain protection as soon as possible, obtain a longer protection period, and save patent fees. But if during the substantive examination process, after invention rejection, are the claims of the authorized utility model patent still stable and can the technical solution still be protected?

According to case No. 699 of the Civil Final Appeal of the SPC Intellectual Property Court in 2020, the owner of a utility model patent named “Green Box” applied for an invention patent for the same technical solution on the same day, but the latter was rejected. The patentee sued the defendant for infringement of their patent rights using a utility model patent. The first instance court ruled that the defendant should compensate the patentee 60000 yuan. The defendant was dissatisfied and appealed to the SPC, which revoked the first instance court’s judgment after hearing the case. So, if the same patent holder applies for the same applicant on the same day and faces invention rejection, is it certain that the utility model patent cannot be protected?

The legality, validity, and relative stability of patent rights are the prerequisites for obtaining protection. The stability of utility model patent rights for the same scheme applied for by the same applicant on the same day when an invention patent application is rejected depends on the specific circumstances of the invention rejection.

Generally, if an invention patent application faces invention rejection due to a lack of novelty or because it was not compared with prior art, typically the same technical solution in a utility model patent can be considered to have unstable rights and therefore cannot obtain protection.

However, if the invention patent application is rejected due to being deemed to lack creativity, further analysis should be conducted based on specific circumstances. Because the creativity requirements for utility model patents and invention patents under the Chinese Patent Law are different, different treatments need to be made according to specific circumstances.

In the above-mentioned case, CNIPA rejected the invention patent application on the grounds that claims 1, 4-7 of the original invention patent application lacked novelty and claims 2, 3 lacked creativity during the substantive examination process of the invention patent with the same scheme applied by the same applicant on the same day. And the comparative document evaluating that claims 2 and 3 lack creativity is the document that claim 1 lacks novelty. The applicant merged the original claims 1-4 in response to the first examination opinion, indicating that the applicant has accepted the first examination opinion. This merged independent claim still lacks creativity. Therefore, the invention patent application in the above case rejected all claims using a comparative document.

From this perspective, for utility model patents and invention patents applied for on the same day and in the same scheme by the same person, if the invention patent application is deemed to lack creativity due to lack of novelty or a comparison document based on the same technical field, and faces the invention rejection, the utility model patent cannot be used for patent protection. Therefore, the Supreme Court revoked the judgment of the first instance court.

However, if an invention patent with the same design as the same person on the same day is deemed to lack creativity and is rejected under conditions that clearly exceed the creativity examination standards of a utility model patent, such as using a comparison document that belongs to a different technical field from the patent application, or using multiple comparison documents, the applicant will face the  invention rejection. At this time, the stability and legality of the utility model patent with the same design as the same person on the same day should be carefully considered, and it should not be hastily deemed that the invention patent has been rejected, and the utility model patent with the same technical solution is also invalid.