By michael li
A competitor can answer a Chinese utility-model infringement claim with evidence from the patent owner's own same-day invention application. Where that application was finally rejected for reasons that also undermine the granted utility model, the examination record can help defeat the claim.
The rejection does not automatically invalidate the utility model. But the certificate is not a reason to ignore what happened in the other file.
That was the problem in a Chinese dispute over a planting box. The patent owner won compensation at first instance, only to lose the case on appeal after the court examined the technical objections already recorded in his own application history.
The reported dispute is Supreme People's Court case (2020) Zui Gao Fa Zhi Min Zhong 699 (（2020）最高法知民终699号). It concerned Sun Xixian and Anhui Langting, a landscaping company, and Chinese utility model ZL200920242493.4, covering a planting box.
Sun sued on claims 1–5 of that patent. He sought an injunction, destruction of products and molds, and more than RMB150,000 in losses and investigation expenses.
The first-instance court found infringement. Because the patent term had already expired, it awarded RMB60,000 in compensation and reasonable enforcement expenses rather than an injunction.
Langting appealed. Its argument included a fact absent from the certificate: Sun had filed an invention application for the same technical solution on the same day, with identical original claims, and that application had been rejected.
The examination history contained specific objections. CNIPA had found original claims 1 and 4–7 to lack novelty and claims 2–3 to lack inventiveness; Sun then combined original claims 1–4 into a new claim 1, but the amended application was still rejected.
The Supreme People's Court considered the relationship between those findings and the claims being asserted. The relevant inventiveness objection used one prior-art reference from the same technical field, and that document also supported the novelty objection to original claim 1.
The utility-model evaluation report raised further doubts about the patent's stability. On December 29, 2020, the Court reversed the first-instance judgment and dismissed Sun's claims.
The Court's published account describes a refusal to provide infringement relief in these circumstances. It does not say that every rejected invention application automatically cancels its utility-model counterpart.
China permits same-day invention and utility-model applications for identical subject matter under the conditions set out in Article 9 of the Patent Law. The filing declarations and eventual treatment of the utility model must also follow the applicable procedures.
The two applications undergo different examination processes. A utility model can be granted following preliminary examination, while an invention application requires substantive examination before grant.
That difference can produce a granted utility model alongside a rejected invention application. It does not establish that the utility model is invalid, or that the invention application's objections are irrelevant.
Today's preliminary examination should not be described as a formatting exercise. The revised Implementing Regulations include checks for obvious noncompliance with Article 22, which addresses novelty, inventiveness and practical use.
The practical task is therefore to examine the actual rejection and compare the technical subject matter. “One granted, one rejected” is the beginning of the review, not its conclusion.
The rule stated in the Court's case account concerns the same technical solution in same-day applications, with the invention rejection's legal status already determined. It identifies lack of novelty, or lack of inventiveness based on one reference in the same technical field, as grounds relevant to refusing relief in the specified circumstances.
Inventiveness needs particular care. The Patent Law sets different requirements for inventions and utility models, and the Court expressly recognized that an invention application's inventiveness rejection cannot simply be copied across without considering those differences.
The title of the examiner's objection is therefore not enough. The claim language, cited material, reasoning and procedural outcome all need to be read together.
A useful comparison starts with the granted claims, not just the product name shared by the applications. Claim numbering can change during examination, so “claim 1” may refer to different technical combinations at different stages.
| File or issue | What to compare | Why it matters |
|---|---|---|
| Filing records | Applicant, filing dates and the technical solutions originally claimed | A related project is not necessarily the same-day, same-solution situation. |
| Original and granted claims | Each relevant technical feature in both applications | Matching titles do not establish matching scope. |
| Examiner's objections | Novelty, inventiveness or another ground | Different objections require different analysis. |
| Cited prior art | Disclosure, technical field and number of references used | These details were important in case 699. |
| Amendments and replies | What changed, what was argued and which claim version was addressed | A later claim number can obscure the earlier objection. |
| Procedural outcome | An examination opinion, rejection decision, review proceedings and final status | An outstanding objection is not a final rejection. |
| Evaluation report | Its conclusions and the claims or references examined | It is additional evidence, not a substitute for reviewing the files. |
This comparison belongs in the application workflow as well as the dispute file. Whoever handles an invention response should know whether the same technical subject matter is already protected by a utility model.
Suppose a manufacturer files same-day applications for a spring-lock hinge. The utility model is granted, while the invention examiner cites an earlier catalogue disclosing the same arrangement.
The invention team adds a further feature to its claims and continues arguing for protection. The granted utility-model claim, however, still covers the broader arrangement.
This is an illustrative example, not a client matter or another reported decision. It does not establish that either application must fail.
It shows why a response prepared for one application should be checked against the other. A defensible distinction in an amended invention claim may not answer an objection to the broader utility-model claim.
Nor is every amendment an admission that another patent is defective. In case 699, the Court drew conclusions from the particular amendment and examination history; that should not be turned into a rule against making legitimate amendments.
Keep the original claims, every amendment, the examiner's cited references and the complete replies together with the companion application's records. A status spreadsheet saying “utility model granted” leaves out too much.
When an objection arrives, ask the responsible patent professional to identify which granted utility-model features it also concerns. If the claims differ, record the differences and the technical basis for them rather than relying on the applications having different legal labels.
Before enforcement, the review should include the proposed infringement position and any evaluation report, with appropriate Chinese legal advice. An evaluation report can be evidence in a dispute; it is not itself a CNIPA invalidation decision.
For the broader application framework, see IPcrossark's China patent rules guide for foreign enterprises. Its guide to utility-model claims and invalidation evidence provides related background on comparing claims, alleged defects and supporting materials.
No. Case 699 concerned whether infringement relief should be supported on its facts, not an automatic cancellation mechanism. The rejection's grounds, the relationship between the claims and the procedural status require examination.
It should not be equated with a final rejection. The Court's stated rule refers to an invention application whose rejection has a determined legal status, so the actual stage and outcome matter.
No. The statutory inventiveness requirements differ, and the Court required attention to that distinction. In case 699, the same technical field and use of a single reference were important to its reasoning.
Not automatically. Compare the original, amended and granted claims and the explanation given for the amendment; case 699 does not make every narrowing amendment an admission against another patent.
No. Article 66 provides for use of an evaluation report as evidence, while Article 45 separately provides the procedure for requesting invalidation. A report's findings still deserve attention when assessing the proposed claim.
IPcrossark's China patent services include utility-model filing assistance from search to registration, and invention filing assistance with searches and examination responses. A paired-application discussion should bring both files to the same table rather than treating each status update in isolation.
When contacting IPcrossark, provide both application numbers, the granted utility-model claims, invention examination opinions, replies and any evaluation report. Ask which cross-file checks and response tasks are included in the engagement.
If an infringement dispute is already developing, clarify separately who will assess the litigation position and provide Chinese legal representation. Filing assistance should not be assumed to include contentious work or a guarantee that a granted patent can be enforced.
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