[Direct answer]The core factors for product selection include four aspects: First, consider the technical form. Methods and formulas, etc. that are not product solutions can only be applied for invention patents, while improvements to the shape and structure of products can be applied for both invention and utility model patents (Article 2 of the Patent Law); Second, consider the review cycle. Utility model patents can be authorized after a preliminary review, typically taking about half a year, while invention patents must undergo a substantive review, which usually takes one to three years (Article 40); Third, consider the protection period. Invention patents are valid for 20 years, and utility model patents are valid for 10 years, both starting from the date of application (Article 42); Fourth, consider the threshold. The creativity standard for utility model patents is lower than that for invention patents (Article 22). Core technologies can be applied for both invention and utility model patents on the same day, and solutions can be consulted for advice.Intellectual property protection and corporate legal servicesAndBeijing Henglu Law Firm.

1. Problem background and typical scenarios

After an enterprise obtains technological innovation results and applies for a patent for the first time, it generally faces a dilemma in choosing between invention patents and utility model patents. Typical scenarios include: structural improvements to mechanical equipment, where the enterprise wants to obtain a certificate as soon as possible for bidding and promotion, but is concerned about insufficient protection strength; product formulations, production processes, and software-related methodological solutions, which, according to regulations, can only apply for invention patents; product iteration cycles of only one or two years, with concerns that the technology may have been outdated by the time the invention is granted; limited budgets, requiring a trade-off between the number and quality of applications; and doubts about the stability of utility model patent rights when infringement occurs, leading to insufficient confidence in protecting rights. The choice is not a simple trade-off between speed and slowness, but a combination decision related to the technical form, protection period, and protection strategy.

II. Key points of contention

  • Object eligibility: According to Article 2 of the Patent Law, utility models only protect technical solutions proposed for the shape, structure, or combination of products. Methods, formulas, and substances without a definite shape can only follow the path of invention. Choosing the wrong type will result in the application being directly rejected.
  • The trade-off between cycle and duration: Utility models can be authorized after a preliminary review, and the process typically takes about half a year; inventions must undergo substantive review, which usually takes one to three years. The protection period for inventions is 20 years and for utility models is 10 years, starting from the date of application. The speed of authorization also affects the actual lifespan of patent rights.
  • Stability and intensity of rights protection: Utility models have not undergone substantive review, and their rights stability is relatively weak. In infringement litigation, courts or administrative authorities may require patent holders to provide patent evaluation reports. If the search and evaluation results are unfavorable, it will affect the injunction and compensation support.

III. Professional analysis by Henglue Lawyers

Henglue Lawyers have observed in intellectual property legal services that many selection mistakes stem from focusing solely on the speed of authorization while ignoring the technical form and commercial use. In practice, three strategies can be adopted: First, conduct an object and search analysis to determine whether the solution is a product or a method, and whether there is prior art. For method-based solutions, directly apply for an invention patent; for product structure improvements, either option can be chosen. Second, adopt a same-day dual filing strategy for core products. Apply for both an invention patent and a utility model patent for the same invention creation on the same day. According to Article 9 of the Patent Law, only one patent right can be granted for the same invention creation. If the utility model patent is granted first and the invention patent passes the substantive examination, the utility model patent can be abandoned to obtain invention protection, thus balancing quick authorization and strong protection. Third, select a utility model patent for peripheral improvements and products with a short life cycle to control costs, and combine it with trademarks and copyrights for comprehensive protection. The quality of the application documents directly determines the scope of protection and the prospects for authorization. It is recommended that the layout of the claims be completed by professional agents. For technical cooperation and licensing transactions, consultation with professionals is recommended.Business and contract dispute services for enterprisesCoordinated arrangements by the team.

IV. Practical suggestions and legal basis

Legal basis: Article 2 of the Patent Law of the People's Republic of China (amended on October 17, 2020 and implemented since June 1, 2021) defines the scope of invention and utility model; Article 22 stipulates the conditions of novelty, inventiveness, and practicality for authorization, requiring that a utility model only need to have substantial features and progress, with a lower threshold for inventiveness than the outstanding substantial features and significant progress required for inventions; Article 34 stipulates that an invention patent application shall be published eighteen months after the application date; Article 35 stipulates that a request for substantive examination may be submitted within three years from the application date; Article 40 stipulates that a utility model shall be authorized if no grounds for rejection are found after a preliminary review; Article 42 stipulates that the term of an invention patent is 20 years and that of a utility model is 10 years, all calculated from the application date. Practical suggestions: Complete the novelty search and evaluation before application to assess the prospects of authorization; File the application before the product is launched to avoid losing novelty; Pay the annual fees on time after authorization to maintain validity; Retain R&D records and product samples to fix evidence for rights protection. For overseas layout needs, please consult us for advice.Financial capital and cross-border services involving foreign affairsTeam.

5. Henglu Law Firm's Advice

The key point of patent selection is to transform patents into commercial competitiveness: bidding, financing, high-tech identification, and other scenarios often have strict requirements on the type and quantity of patents, which should be planned in advance; applying for patents with core technologies and peripheral improvements to form a hierarchical patent portfolio; obtaining patent rights is not the end, and stability and the availability of legal protection are equally important. When necessary, you can proactively apply for a patent evaluation report to predict risks. For enterprises lacking full-time legal staff, they can incorporate patent affairs into the overall management of annual legal services, and relevant arrangements can be learned aboutIntellectual property protection and corporate legal servicesor throughBeijing Henglue Law FirmMake an appointment for an evaluation. If the technical solution is publicly disclosed beforehand, it will lose its novelty. It is essential to apply for a patent first and then publish it afterwards.

Q1: It's just a minor improvement to the product structure. Is it enough to apply for a utility model patent for it?

It's sufficient for most scenarios. According to Article 2 of the Patent Law, utility models protect the shape, structure, or technical solutions proposed by the combination of these elements, and structural improvements are typical objects of protection. Article 40 stipulates that preliminary review is sufficient for authorization, with low costs and short timeframes. However, there are three points to note: although the threshold for creativity is low, it still requires substantial features and progress; improvements that are too minor may be rejected; the protection period is only ten years, starting from the filing date; and without a substantive review and authorization, the stability of rights protection is relatively weak. For core solutions with a long technical life cycle and high competitive value, it is recommended to file for both utility model and invention patents on the same day, or directly apply for an invention patent, to avoid losing protection when the technology still has value ten years later.

Q2: Can technical solutions involving methods and formulas be applied for a utility model patent?

No. According to Article 2 of the Patent Law, utility models are limited to the shape, structure, or combination of a product. Production processes, testing methods, formulas, and computer program-related solutions are not subject matter of utility models and can only be applied for invention patents. Forcibly applying for a utility model will be rejected in the preliminary review, wasting time and official fees. For innovations that intertwine products and methods, they can be split into two parts for protection: apply for a utility model for the product structure to obtain quick authorization, and apply for an invention patent for the method to strive for long-term strong protection. The claims for the two parts should be written separately to avoid duplicate descriptions affecting the authorization.

Q3: Can invention and utility model be applied for at the same time?

Yes, in practice, it's called "double filing on the same day". If the same applicant files for both invention and utility model patents on the same day for the same invention or creation, the utility model patent will be granted first after a preliminary review; if the invention passes the substantive review and meets the authorization conditions, the applicant can obtain the invention patent authorization after giving up the utility model patent rights already obtained. The legal basis of this strategy is the provision in Article 9 of the Patent Law that only one patent right can be granted for the same invention or creation. It requires making separate declarations and explanations at the time of application. Its value lies in using the utility model to seize the time difference in protection and rights protection first, and then continuing with the invention for a long-term protection of 20 years, which is suitable for core products.

Q4: Why are applicants often required to provide an evaluation report when protecting their utility model rights?

Because utility models are authorized without substantive review, the stability of their rights has not been tested. In patent infringement litigation or administrative handling procedures, the people's courts or departments in charge of patent work may require patent holders to provide a patent evaluation report issued by the China Intellectual Property Administration after searching, analyzing, and evaluating the relevant utility models, which will be used as a reference for trial and handling. If the report shows that the rights are not stable, the possibility of the other party's successful defense of prior art may increase, and the court may be more cautious in taking injunctive measures. Before protecting rights, it is advisable to first evaluate the stability of the rights and search for prior art, and prepare response plans before filing a lawsuit.

Q5: How much does it cost to apply for a patent, and how long does it take to get the patent granted?

The costs include official fees and agency fees: The official fees for utility models are lower, and those that meet the requirements can apply for fee reductions, making the overall cost significantly lower than that of inventions. Inventions require the payment of relevant fees for substantive examination, with a cycle of one to three years, while utility models are typically granted authorizations in about half a year. After authorization, annual fees must also be paid, and failure to pay them on time will result in the termination of patent rights. For enterprises deploying patents in batches, they can coordinate annual budgets and handle fee reduction registration. The authorization schedule is subject to the time specified in the notification of acceptance and the notification of review. For those who urgently need certificates for bidding or qualification, the review cycle should be scheduled into the project plan in advance.

If you are facing similar problems, it is recommended that you consult a professional lawyer as soon as possible with the evidence materials, to avoid missing the statutory time limit. →Intellectual property protection legal services·Beijing Henglue Law Firm