Perspective | Analysis of Litigation Strategies for the Seamless Transition Between Utility Model Patents and Invention Patents—Litigation Protection for Simultaneously Filed Invention and Utility Model Patent Applications
Published:
2025-11-21
Recently, the author encountered a patent infringement case involving the timing of litigation. Specifically, a certain entity filed both a utility model patent application and an invention patent application for the same invention at the same time when applying for a patent. Currently, the utility model patent has been granted and a certificate has been issued, while the invention patent application is still undergoing substantive examination. The entity has discovered that a third party is infringing upon its patented product and now faces the question of how to assert its rights. As far as we understand, when a utility model patent has already been granted but the invention patent application has not yet been granted, the right holder can file a lawsuit based on the utility model patent right. However, if the invention patent is granted during the course of the litigation, according to legal provisions, the utility model patent right will consequently be terminated (it’s important to note that “termination” differs from “invalidation”: invalidation renders the patent null and void from the very beginning, whereas termination means the patent becomes ineffective from the date of termination itself). This would result in the loss of the legal basis for the ongoing litigation. So, under these circumstances, how should the right holder properly assert its rights? Is it necessary to wait until the invention patent is granted before filing a lawsuit?
Problem Background
Recently, the author encountered a patent infringement case involving the timing of litigation. Specifically, a certain entity filed both a utility model patent application and an invention patent application for the same invention at the same time when applying for a patent. Currently, the utility model patent has been granted and a certificate has been issued, while the invention patent application is still undergoing substantive examination. The entity has discovered that a third party is infringing upon its patented product and now faces the question of how to assert its rights. As far as we know, if a utility model patent has already been granted but the invention patent application has not yet been granted, the right holder can file a lawsuit based on the utility model patent right. However, if the invention patent is granted during the course of the litigation, according to legal provisions, the utility model patent right will consequently be terminated (it’s important to note that “termination” differs from “invalidation”: invalidation renders the patent null and void from the very beginning, whereas termination means the patent becomes ineffective from the date of termination itself). This would result in the loss of the legal basis for the ongoing litigation. So, under these circumstances, how should the right holder properly assert its rights? Is it necessary to wait until the invention patent is granted before filing a lawsuit?
According to Article 9 of the Patent Law of the People's Republic of China (as amended in 2020), if the same applicant files both a utility model patent and an invention patent application on the same day for the same invention and creation, and the utility model patent is granted first, the applicant shall declare its waiver of the utility model patent right when the invention patent application is subsequently granted. This means that once the invention patent is granted, the original utility model patent right will immediately terminate.
This article, drawing on a typical case from the Supreme People's Court, analyzes litigation coordination strategies in such situations, with the aim of providing reference for similar issues.
I. Provisional Protection Period for Invention Patents
To understand the provisional protection period for invention patents, it is essential to clarify its key milestones: the date of invention patent application— the date of publication of the invention patent application (marking entry into the substantive examination stage)— and the date of announcement of the grant of the invention patent. By contrast, utility model patents have only two key dates—the date of application and the date of announcement of grant—and do not require substantive examination.
According to Article 13 of the Patent Law of the People’s Republic of China (as amended in 2020), after an invention patent application is published, the applicant may request the entity or individual implementing the invention to pay a reasonable fee; however, the applicant does not have the right to prohibit others from practicing the invention. In other words, during the period from the publication of the invention patent application to the issuance of the authorization notice, the right holder enjoys only the right to request payment of a reasonable usage fee and does not have the right to demand that the implementation be stopped.
II. Analysis of Typical Cases by the Supreme People's Court
Case No.: Supreme People's Court, Intellectual Property Division, Civil Judgment No. 1738
Parties: Beijing某 Intelligent Equipment Co., Ltd. v. Hunan Province某 Intelligent Equipment Co., Ltd. and others
First Instance: Intermediate People's Court of Xi'an City, Shaanxi Province, Civil Judgment No. (2019) Shan 01 Min Chu 704 (August 20, 2020)
Second Instance: Supreme People's Court Civil Judgment No. (2020) Supreme Law Zhi Min Zhong No. 1738 (November 2, 2022)
Key points of the court's ruling:
The Patent Law allows applicants to file both a utility model patent and an invention patent for the same invention or creation on the same day, with the aim of comprehensively safeguarding the applicant’s rights and interests. Therefore, the subsequent grant of an invention patent cannot be used to invalidate the legitimate rights and interests that the applicant has already obtained based on the earlier utility model patent.
1. Remedies available during the period of infringement
[Refer to Article 18 of the “Summary of Key Rulings of the Intellectual Property Division of the Supreme People’s Court (2022)”]
If an applicant files both a utility model patent and an invention patent for the same invention and creation on the same day, and after the utility model patent has been granted, the applicant declares that it is waiving its utility model patent right in order to obtain authorization for the invention patent, the patent owner may adopt the following remedies against the acts of others who practice the patented technical solution during the following period:
From the date of grant of the utility model patent to the date of publication of the invention patent application: You may assert your rights based on infringement of a utility model patent.
From the date of publication of the invention patent application to the date of authorization of the invention patent: You may claim payment for the use fee during the provisional protection period of an invention patent, or you may choose to assert infringement of a utility model patent right.
2. Determination of “the same invention and creation”
The invention patent application involved in the case underwent amendments before being granted; as a result, the scope of its claims differs from that disclosed in the authorization notice for the utility model patent. Therefore, the two patents do not constitute “the same invention and creation” and can each be granted separately. However, the claims of both patents were amended during invalidation proceedings and remained valid after such amendments. Consequently, the scope of protection for each patent should be determined by the amended claims. Upon comparison, it was found that after amendment, the two patents share claims with identical scopes of protection, thus constituting the same invention and creation. Therefore, in essence, this case still involves the issue of seamless protection between the two patents, and the aforementioned rules may be applied by analogy.
3. Principle of Consolidated Handling for Ongoing Infringement Acts
If the alleged infringing act has continued from the date of grant of the utility model patent through to after the grant of the invention patent, the court should not demand that the right holder make a strict distinction between the bases of his claims at the time of filing the lawsuit. The People’s Court may provide clarification on this point. If the right holder asserts his rights based on the invention patent right, and the scope of his claim covers the period during which the utility model patent right was valid, the court may hear the case jointly. Consolidation of the subject matter of the lawsuit This approach does not violate legal provisions and is consistent with the legislative intent of the same-day application system. Such a handling method helps reduce the litigation burden on the parties involved and achieves a substantive resolution of the dispute.
III. Summary
In summary, in the practical application of litigation involving the linkage between utility model patents and invention patents, the feasible approaches for asserting rights have been gradually clarified through judicial practice. Specifically:
The right holder may file both a utility model patent and an invention patent for the same invention on the same day, and may lawfully assert corresponding rights at different stages of the patent rights. If the utility model patent is granted first, the right holder may bring a lawsuit against infringing acts that occur after the utility model patent is granted. Even if the utility model patent right subsequently terminates due to the grant of an invention patent, this shall not negate the legitimate rights and interests already enjoyed by the right holder during the validity period of the utility model patent.
Specifically, if an infringement occurs after a utility model patent has been granted but before the invention patent application is published, the infringer can directly invoke the utility model patent right to claim liability for infringement. If the infringement occurs after the invention is published but before it is granted, the injured party may either assert claims for infringement of the utility model patent or claim payment for the use during the provisional protection period of the invention patent.
With regard to infringing acts that persist from the date of grant of the utility model patent through the period following the grant of the invention patent, the People’s Court may, based on the validity of the invention patent right, hear all such infringing acts—including those occurring during the term of the utility model patent—in a single proceeding, without requiring the rights holder to strictly differentiate between the grounds for claims arising from different time periods. This approach not only aligns with the legislative spirit of the Patent Law, which encourages innovation and provides comprehensive protection to rights holders, but also helps reduce the litigation burden on the parties involved and promotes the substantive resolution of disputes.
Therefore, when confronted with such issues of transitional protection, rights holders should accurately grasp the statutory boundaries of each stage of their rights and make good use of the consolidated trial rules developed in judicial practice, so as to maximize the protection of their interests.
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