An International Guide to
Patent Case Management for Judges

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4.7.4 Avoidance of double patenting

Article 9 of the Patent Law stipulates the following:

For any identical invention-creation, only one patent shall be granted. However, where the same applicant files applications for both a utility model patent and an invention patent with regard to the identical invention-creation on the same day, if the utility model patent granted earlier has not been terminated and the applicant declares to abandon the utility model patent, the invention patent may be granted.

If two or more applicants file patent applications for the identical invention-creation, the patent right shall be granted to the applicant whose application was filed first.

The main consideration of this provision is that, to avoid conflicts between patent rights, no more than one patent right can be granted for identical invention-creations. The provision that “the patent right shall be granted to the applicant whose application was filed first” reflects the first-to-file principle.

In a retrial of an administrative dispute over the invalidation of an invention patent, Jining Pressureless Boiler Factory v. Patent Reexamination Board,138 the Supreme People’s Court held that the “identical invention-creation” referred to in the Patent Law means patent applications or patents with the same protection scope. For such applications or patents, a judgment can be made by simply comparing the content of the claims. It was also held that, for the purpose of the Patent Law, the principle of avoidance of double patenting means that two or more valid patents for identical invention-creations cannot co-exist, not that the patent can be granted for the identical invention-creations only once.