Filing UM and Invention Simultaneously in China
For “products” (generally, mechanical inventions), Applicants can file both a utility model (UM) and invention patent simultaneously.The advantage of filing both UM and invention patent applications is that the UM will grant quickly (usually within 6 – 12 months since not substantively examined) thereby providing some patent protection while the invention patent application is undergoing examination, which can take several years. Note though UMs are only valid for 10 years from filing and do not protect methods. Invention patents are generally considered more valuable than UMs since they last 20 years from filing and have a broader protection scope (i.e., can claim methods).
First, note that filing utility model (UM) application and invention application simultaneously can be only done when filing directly or via Paris Convention (and not PCT national phase entry when you must choose UM or invention).
Second, note that if the UM and invention patent have the same scope, then the applicant must abandon one or the other when the invention patent is to grant. Usually, applicants will keep the invention patent due to the longer life and there may only be a few years left on the UM. Further, the invention patent may have a broader scope and have a better chance of surviving invalidation proceedings since it has been substantively examined.
Third, UMs have limited subject matter eligibility. The UMs can be granted only for products. The products “shall be objects manufactured by industrial methods, having definite shape and structure, and occupying a certain space.”  Accordingly, methods, chemicals/pharmaceuticals, software, etc. are not subject matter eligible.
First, by filing the UM application and invention application simultaneously, the applicant may obtain earlier protection for the invention. Generally, the examination period for an invention application may last 1.5-3.5 years, while the period from filing the UM to getting approved may only need 6-12 months. So, for example, if the applicant files the UM application and invention application simultaneously, and the UM application is granted by the SIPO after 7 months from the filing, the invention for products can be protected from then on. However, if the applicant only files the invention application and this invention application is published after 18 months from the filing and then granted after another 10 months from the publication, the applicant can only enforce the patent after grant at 28 months, which is 4 times as long as the UM.
Second, the UM can act as backup in case invention application fails. For example, if the invention application is rejected during the examination for allegedly lacking inventiveness, the UM will still exist. Further, due to lower standard of inventive step for the UM, it may survive an invalidation proceeding while the invention patent application failed substantive examination.
Third, the applicant may have a chance to keep both the UM patent and invention patent finally. Specifically, if the simultaneously filed UM application has been granted, and if the invention application has met all the other conditions for patentability, the examiner of the invention application will notify the applicant of choosing to abandon the UM or amend the invention to avoid double patenting if the claimed scope of both are the same. Then, the applicant can claim a different scope from the UM application by amending the claims of the invention application, if needed. Accordingly, the patentee would then have two patents with difference scope and different inventive step requirements.
Fourth, the additional fees for filing UMs are minimal-just foreign associate’s fee for formatting and filing the UM and the SIPO official fees including filing fee of RMB 500 (about USD 75) and grant fees of RMB 200 (about USD 30). There should be no additional translation fee since the UM can use the same translation as the invention patent application.
Thus, filing UM application and invention application simultaneously may help the applicant to obtain faster protection to his/her invention with minimal additional cost in China.
 The utility model is a new technical solution relates to the improvement for the shape and/or structure of a product, and all the processes and the objects which exist naturally and are not made by man are not the subject matter protected by the utility model.
 6.1, Chapter 2, Part 1 of GUIDELINES FOR PATENT EXAMINATION
According to Article 2. 3, patent for utility model can be granted only for products. The products herein shall be objects manufactured by industrial methods, having definite shape and structure, and occupying a certain space.
All the processes and the objects which exist naturally and are not made by man are not the subject matter protected by the patent for utility model.
The processes referred to above include the manufacturing processes, methods of use, methods of communication, processing methods, computer programs or the method of applying a product to a specific purpose, etc.
 The invention can get appropriate fees when being infringed after the publication of the invention application according to Article 13 of Chinese patent law, “after the application for an invention patent is publicized, the applicant may require the organization or individual that exploits the said patent to pay appropriate fees.”
 4, Chapter 6, Part 4 of GUIDELINES FOR PATENT EXAMINATION
… inventive step of a utility model means that, as compared with the prior art, the utility model has substantive features and represents progress. Therefore, the requirement of inventive step for a utility model shall be lower than that for an invention.
The difference in requirement of inventive step for a utility model and for an invention is mainly indicated by whether there exists a technical teaching in the prior art. In determining whether there exists a technical teaching in the prior art, a utility model differs from an invention in the following two aspects.
(1) Field of prior art references
…For a utility model, the examiner will normally focus on the technical field to which the utility model belongs. Where there is a clear technical teaching, for example, where there is an explicit description in the prior art, to prompt a person skilled in the art to look for technical means in a proximate or relevant technical field, the proximate or relevant technical field may be considered.
(2) Number of prior art references
…For a utility model, normally one or two prior art references may be cited to assess its inventive step. Where the utility model is made just by juxtaposing some prior art means, the examiner may, according to the circumstance of the case, cite more than two prior art references to assess its inventive step.
 6.2.2, Chapter 3, Part 2 of GUIDELINES FOR PATENT EXAMINATION
However, where an applicant files on the same day (means the date of filing) applications for both patent for utility model and patent for invention relating to the identical invention-creation, if the patent for utility model has been granted and does not terminate, and the applicant has stated the fact respectively upon filing the applications, double patenting may be avoided by amending the invention application, or alternately by abandoning the patent for utility model. Therefore, during the examination of the invention application mentioned above, if the invention application has met all the other conditions for patentability, the applicant shall be notified to make a choice or make amendments. Where the applicant chooses to abandon the patent for utility model which has been granted, he shall submit a written declaration to abandon the patent for utility model at the time of making response to the Office Action. In this case, the examiner shall issue Notification to Grant Patent Right regarding the invention application which has met all the conditions for patentability but has not been granted yet, and transfer the written declaration of abandoning the patent for utility model mentioned above to the relevant examination departments for registration and announcement by the Patent Office. In the announcement, it shall be indicated that the patent right for utility model mentioned above ceases from the date of the announcement of grant of the patent for invention.