Proposed Tougher Approach to Examination for Utility Model and Design Patent Applications in China

Proposed tougher approach to substantive examination for Utility Model and Design Patent Applications in China.

In a bid to improve the quality of Utility Models and Design Patents granted in China, the Chinese State Intellectual Property Office (SIPO) has put forward proposals to impose tougher examination requirements for Chinese Utility Model and Design Patent applications.

Currently, a design patent (also known as a registered design in Europe) application in China does not undergo substantive examination. This means that, although the Chinese Patent Law requires a design to be new and distinctly different from any one of the existing designs known anywhere in the world, in practice, a Chinese Examiner does not conduct any searching during examination of the design application. Based on the current Examination Guidelines, the Examiner is only required to examine the application based on the application details and what is considered to be common knowledge of a general consumer.

Equally, although a Utility Model (also known as a petty patent in the US or innovation patent in Australia) application is required to be novel, creative and of practical use under the Chinese Patent Law, the level of examination requirement is similarly low.

Considering an Invention Patent application, which is the equivalent of a standard patent available in countries or regions such as the UK, Europe or the US, typically takes around 3 to 6 years to grant, grant of a Utility Model can be obtained quickly, typically between 10 to 18 months. A Design Patent can be even quicker. As such, filing such applications in China has been a faster, cheaper and easier way to obtain patent protection for an invention, compared to an Invention Patent. Both forms of patent protections have been proving popular. In 2011, SIPO granted 408,000 Utility Models and 380,000 Design Patents.

However, this may all be about to change. In a public consultation issued in February 2013, SIPO has indicated that the lack of substantive examination for both types of applications have caused patents to be granted to inventions or designs that are already known, or caused patents to be granted to inventions or designs more than once, ie double patenting.

In order to improve the quality of Utility Models and Design Patents, SIPO is proposing to amend the Examination Guidelines such that Examiners are encouraged to conduct searches on existing technologies and designs when examining such applications. Furthermore, the Guidelines proposed to be amended such that Examiners are not restricted as to how such information are obtained.

It is envisaged that if SIPO is to implement its proposed changes to tighten examination procedures for both types of applications, the costs and time required to see such applications through to grant are also likely to increase.

Early indications suggest that SIPO may already be implementing changes and Examiners will be improving enforcement of the novelty requirement for such applications. However, even with tighter examination requirements, for an invention with a short commercial life and somewhat limited novelty, a Utility Model application should …

The MAIR Model – A Non-Linear Approach to Business Start Up

As an entrepreneur and someone whose business involves working with entrepreneurs, I'm always interested in different models of business start up, and an article I read recently reminded me of the MAIR Model. I first came across this when doing and MSc in Entrepreneurship at Stirling University in 1995, and have used it quite a lot since for training both advisors and entrepreneurs, both in my work with support organizations and my consultancy with Eriskay Associates. Since then, it seems to have come in and out of fashion a bit, but I like it for its logical simplicity and the fact that it is not linear (ie step one, step two, step 3 …)

The basic idea is that you explore four 'interactive variables': Motivation, Abilities, Ideas and Resources. Clearly, each has a critical role to play in its own right:

Motivation: I guess that's what separates thinkers and dreamers for actors and doers … The willingness to really go out and work hard, often under conditions of little short term reward and lots of uncertainty, seems to be one of the hallmarks of successful entrepreneurs .

Abilities: We could start a whole separate thread on this – what are the key abilities that make a successful entrepreneur – no doubt a mix of both hard and soft skills.

Ideas: Arguably, these need to be clearly rooted in a market need to be valid, although, there are some business that seem to be product-led rather than market-led … fashion, any Apple product, the Rubik's cube .. .

Resources: Entrepreneurs are kind of hamstrung until they get resources behind them. I guess we automatically think of cash here, but skills, knowledge and contacts can make a lot of difference to.

… but you also need to think about how these factors interact – a good idea is of limited value, without the motivation and resources to turn it into a business and this is where the final components of the MAIR model come into play: Planning and Organization! Arguably, this is the real job of the entrepreneur. Bringing all the factors together to create something that did not exist before, and may just change the world!

As far as I know, the academic origins of this model lie with Gibb and Ritchie (1982), but I have seen references to it dating back to the 1970s, where it was apparently in use at Durham University Business School. It has appeared in a number of articles since, but I am surprised that it has not gained more traction.

By comparison, think about SWOT analysis – it provides a simple mnemonic and a recognized structure for analysing a situation. And, despite it's many deficiencies (the subject of a future article!), It has gained widespread usage. So, why has the MAIR model not achieved the same? Incidentally, one of the other advantages is it's adaptability. In a very interesting article by Pat Richardson et al (The challenges of growing small businesses: insights from women entrepreneurs …