A long-requested enhancement to the Derwent World Patents Index has been implemented this week – the handling of Chinese dual filings. This is an important development which will mean more efficient and accurate prior art, infringement/invalidity and freedom to operate searching for those seeking to protect and/or practice their inventions in China.
So what are Chinese dual filings and why do they matter?
Since 2009, under Article 9 of the amended Chinese patent law, it has been possible to file for protection with both a utility model patent and an invention patent provided the dual applications are made by the same applicant on the same day. However, only one patent may be granted for one invention. So, on notice from the patent office of the intent to grant the invention patent, the applicant must elect to abandon the utility model (assuming that is still in force) in favor of allowing the invention patent to grant to prevent dual patents for the same invention. Other options include amending the claims of the utility model, or abandoning the invention patent application in favor of the utility model.
There is significant potential advantage offered by this provision of Chinese law – it can be used to extend the effective lifetime of patent protection for certain classes of invention (utility models are available only for apparatus, product or shape, but not method or process, whereas invention patents are available for all these categories).
This double application trick can be used to protect a technology as a utility model before the invention patent is granted. The period of protection can potentially be extended by many months or even years as illustrated here:
Dyson Ltd. is now wise to this tactic having learned from their earlier experience:
“We launched our fans in 2009, and by 2010 we were seeing replicas being made in China. We had design protection in place to prevent lookalikes, but the patent applications were still going through the system so we had to wait before we could take action against products that looked different but used the same technology. Utility models do fulfil a useful function. They enable us to be able to stop copies quickly by ensuring we have enforceable rights in place in the key territories before we launch a product.”
But while this strategy is commercially valuable, it throws up a challenge for the patent searcher needing to ensure complete and accurate information. It is estimated that up to 20% of total filings are dual filings. The components of the dual filed pair of applications are published on different dates and have no obvious link with each other. Therefore, they most often end up in different patent families with no indication that the utility model has an accompanying invention application and vice versa. This leads to inefficiency and potential inaccuracy regarding the current state of protection of inventions.
Clarivate Analytics has now devised a unique solution to this problem. Using a combination of machine learning and human intellect, our process successfully identifies dual filing pairings and assigns them to the correct patent families within days of publication rather than months as with other sources. The process also provides data which is as complete as possible and spans the whole time range including the most recent publications. It also caters for complex cases like divisions and PCT data which could involve the wholesale rearrangement of existing patent families.
The use of human intellect in this process is essential in removing ambiguities in assignment of potential dual filing matches. For example, consider the case where five utility models and five patent applications are filed on the same day by the same applicant. There is insufficient data to automatically link these pairings correctly – this can only be done by intellectual assessment of a trained analyst with the appropriate linguistic and technical skills.
The value of Chinese dual filing strategy is now matched by the DWPI process for correctly identifying and assigning these to the correct patent families – searching Chinese patent information just got a little bit easier.
To learn more about DWPI handling of Chinese dual filings, please go here.
 Booth of Dyson quoted in Managing Intellectual Property