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The amended Patent Law and amended Implementing Rules of the Patent Law have provided new provisions regarding the same invention/creation as follows:
Article 9.1 of Patent Law provides that
A patent right shall be granted only for a single invention-creation. However, where an applicant applies for both a patent right for utility model and a patent right for invention with respect to an invention-creation made on the same date, if the previously obtained patent right for utility model has not terminated and the applicant makes a statement to waive the patent right for utility model, a patent right for invention may be granted for the invention-creation.
Where two or more applicants file applications for a patent for an identical invention-creation, the patent right shall be granted to the applicant whose application was filed first.
Article 13 of the old Implementing Rules of the Patent Law has been deleted and a new Article 41 is supplemented into the amended Implementing Rules of Patent Law as follows:
Where two or more applicants respectively file a patent application for an identical invention or creation on the same day (i.e. the application date, or the priority date where a priority right applies), the identity of the applicant shall be determined through negotiations between said applicants after notices have been received from the patent administrative department under the State Council.
Where the same applicant files patent applications for a utility model and an invention with respect to the same invention or innovation on the same day (i.e. the application date), when the applications are filed, statements of having filed another patent application with respect toconf the same invention or innovation shall be respectively made; where no such statement is made, the application shall be dealt with in accordance with Paragraph 1, Article 9 of the Patent Law under which only one patent shall be granted for the same invention or innovation.
Where the patent administrative department under the State Council announces that a patent right for a utility model has been granted, the statement shall announce that the applicant has simultaneously applied for an invention patent in accordance with Paragraph 2 of this Article.
Where no grounds for rejecting an invention patent application are found in the course of an examination, the patent administrative department under the State Council shall notify the applicant that it must declare within a specified period that the utility model patent has been surrendered. Where the applicant makes a surrender declaration, the patent administrative department under the State Council shall make a decision to grant an invention patent and make an announcement stating that the applicant has surrendered its utility model patent when announcing that the invention patent has been granted. Where the applicant refuses to surrender the utility model patent, the patent administrative department under the State Council shall reject the invention patent application; where the applicant has not replied when the time limit expires, the invention patent application shall be deemed to have been withdrawn.
The utility model patent shall be terminated on the date of the announcement that the invention patent has been granted.
According to the provisions of the Patent Examination Guidelines, we summarize the Patent Office’s means of dealing with the same invention-creation in the following chart:
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Three Circumstances
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Application Stage
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Invalidation Stage
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Different Filing Date
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First filing principle or conflict application
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The later application is rejected
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The later application is declared invalid
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The later application is declared invalid
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Different Applicant,
Same Filing Date
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negotiation
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Deemed to be withdrawn or both of them are rejected
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Both applications are declared invalid
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Selection upon negotiation
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Maintain one patent valid or declare both patents invalid
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Only one patent is declared invalid
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Declare the other patent invalid
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Handle according to the previous item
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Same Applicant,
Same Filing Date
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Neither of the applications is granted
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Select one or make modification
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Deemed to be withdrawn or both of them are rejected
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Same publication date for granting
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Declare one patent invalid
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Declare this patent invalid
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Both applications are declared invalid
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select/not select
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Martian the selected patent valid/ declare both of the patents invalid
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Another application has been granted
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modify
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Deemed to be withdrawn or reject the application
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Different publication date for granting
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The prior patent is declared invalid
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Maintain the patent valid
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The later patent is declared invalid
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Declare the patent invalid
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The applicant has explained the invention and utility model applications filed on the same day, and the utility model patent has been granted and has not expired yet
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Modify or abandon the utility model patent
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The utility model patent will be terminated once the invention patent is granted
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The applicant has explained the invention and utility model applications filed on the same day, and the utility model patent has not expired when the invention patent is granted
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The patentee may select to maintain the invention patent declared invalid by abandoning the prior granted utility model patent
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