Invention patents and utility models offer additional ways to protect the parts of the machinery that have a practical use. Both patents are required to be novel, inventive, and be used practically. In the patent application the prior technology (prior art) must be identified through reference documents. It must be shown how the product is distinct from the prior art. As patent applications already exist for these two machines, they were publicly disclosed in the Patent Gazettes, this may destroy the novelty of any such invention patent application during the substantive examination phase. During the substantive examination of novelty the examiner will compare the technical solution in a claim of the patent application with the contents disclosed in a reference document of prior technology. If the claims and the prior technology are substantially the same, and they are in the same technical field then they will be an identical invention. The invention patent application will then lose the requirement of novelty and a patent cannot be granted.
If the two machines are applied for as a new single patent, this combination may allow the patent application to successfully pass substantive examination. Regarding novelty, if the technical problem that is to be solved by the combination of the machines, as well as the technical fields and the solutions are different, then there is no reason why these two machines cannot be patented together. The examiner will compare the claims in both, as well as use the description and the drawings to interpret these claims. Emphasis must be placed on drafting claims where the scope of protection is different. i.e. what is actually protected in the claims when they are drafted. In these circumstances, even if the description is the same, the inventions will not be regarded as identical. Regarding the inventive step, the examiner will consider whether the claimed invention is obvious to someone who has knowledge of all the related technology before the patent application was filed. The second stage in the assessment for the inventive step concerns the assessment of the progress of the invention. It must be shown that the two machines when put together produce a better technical effect, such as quality improvement, and that it is a different inventive concept or it is a new trend of technical development. From the brief description it sounds as if the combination of the two machines may produce a better technical effect.
One other aspect to consider is that utility models are easier to obtain than patent rights as they only go through an initial preliminary examination. However, even if the utility model is granted it will be difficult to defend against invalidation if prior art exists that destroys the novelty of the patent. The claims of a utility model must be drafted carefully to ensure they emphasize the novelty, inventiveness and practical applicability of the product.
Applying for patent invalidation with the Patent Review and Adjudication Board (PRAB) in Beijing is an economical way to invalidate their patent. The PRAB is the government agency responsible for hearing patent invalidation cases.
There are options other than paying the high legal fees for the patent invalidation demanded by the lawyer. A patent agency may be directly appointed to attend and manage the patent invalidation process. If a patent agency is appointed then a power of attorney must be signed with the patent agency detailing the scope of the power of attorney. The patent agency must be a certified domestic Chinese patent agency. Certified domestic Chinese patent agencies can be found on the official SIPO website (http://www.sipo.gov.cn).
Duplicate patents may occur for utility models and external design patents as they are only preliminarily examined. The preliminary examination will only examine the forms and whether substantive defects exist in the application. The actual content for which patent protection is sought will not be thoroughly examined. Where duplicate patents have been issued only one patent right may be granted, and the patent application that was first filed will be granted patent rights, while the other patent will be invalidated.
SIPO‐assisted mediation or court‐assisted mediation may be considered instead of going to court. Applications for mediation can be filed with the SIPO or the court which has jurisdiction over the case. In China the parties are also encouraged to reach mediation agreements in patent infringement disputes and the parties may themselves reach mediation agreements.