Strategy on Filing Chinese Patent Applications for Protecting Technical Schemes related to Products (updated September 2013)
The number of Chinese patent filings, as you may see, keeps increasing for years. More and more companies and inventors may start to consider whether and how to file their patent applications in China for seeking better protection on technical schemes related to products (such as product structure or configuration, manufacturing, etc.). A good strategy will be much helpful for seeking better protection in China.
Here we would like to introduce several options for foreign applicants to choose for seeking patent protection on the basis of the estimated cost, protection terms, object for seeking protection and marketing arrangement, etc.
First we would like to briefly introduce basic information about the two main types of patents for protecting technical schemes related to products: utility model and invention patents:
Utility Model Patent
Utility model patent covers any new technical scheme relating to the shape, the structure, or their combination, of a product, which is fit for practical use. A patentable product for utility model patent should be manufactured by industrial methods and have definite shape and structure, and occupying a certain space.
Therefore, all processes, methods and uses are not patentable subject matters under utility model patent. Additionally, any matter that exists naturally and is not made by man, and any compound, composition, medicine, or chemical material that has no certain shape (e.g. gas, solid, powder, particle) is not patentable subject matters under utility model patent.
Pursuant to the related regulations, a utility model patent application should meet the requirements on formalities, patentability and other substantive issues, including novelty, inventiveness (much lower than that for invention patents), unclearness, non-support, unity and industrial applicability.
However, in the prosecution Examiners generally focus on formality issues and obvious unpatentable subject matter and other obvious defects.
Generally examiners do not conduct detailed search on the prior art for obvious non-novelty and non-inventiveness defects but examine based on their technical background knowledge and then a quick simple search for confirmation.
Therefore, for the majority (up to now about 99.8%) of the utility model patent applications, the office actions or rectification notifications are about preliminary examination on formality but not about the substantive examination on novelty; for the minority (up to now about 0.2%), the office actions or rectifications are about obvious non-novelty and non-inventiveness defects.
Generally, it takes short time, e.g. about one year, for obtaining patent certificate from filing a utility model application.
The duration of patent right for utility models patent is ten years, counted from the date of filing.
Accordingly, the cost for filing and prosecution for a utility model patent application is low. Grossly cost may be about US$2000.00, including official fees for filing and issuance and attorney fees for filing and prosecution, for a small application, which will be more for bigger applications.
Invention Patent
Invention patent covers any new technical scheme relating to a product, a process or improvement thereof.
It takes three to five years to obtain patent certificates due to substantive examination.
The cost for filing and prosecution is higher too. For example, an average cost for (1) filing may be about official fees US$500.00 (if including the substantive examination request about US$900.00) and attorney fees US$1500 to 3000.00, and (2) reporting and responding to office actions about US$2000.00 to 4000.00.
The duration of patent right for inventions is twenty years, counted from the date of filing.
Strategy for Filing
Based on the above information and other regulations, with respect to difference invention-creation and various needs, we would like to provide the following options for filing:
Option One: Filing an invention patent application
For seeking protection for products, processes and methods having higher inventiveness and for twenty years protection term;
Option Two: Filing an utility model patent application
For seeking protection for some small products or improvement on products, having lower inventiveness and for ten years protection term;
Option Three: Filing both an invention patent application and a utility model patent application on the same day
For seeking protection for important products, having higher inventiveness and for quick as well as long-term protection;
Through such option, the applicant may obtain a quick protection through utility model patent (after about one year) as well as a long-term protection through invention patent (twenty years).
Additionally before the corresponding invention patent is granted, the applicant must abandon the granted utility model patent to avoid double patenting.
How to file
A Chinese patent application can be filed before the State IP Office of China under Paris Convention or through national phase of a PCT International application. Therefore the above options can be implemented as below:
Regarding Option One - invention:
filing under Paris Convention, or
filing as national phase of a PCT international application
Regarding Option Two – utility model:
filing under Paris Convention, or
filing as national phase of a PCT international application
Regarding Option Three – both invention and utility model:
filing under Paris Convention only;
under this option, both invention and utility model patent applications must be filed on the same day and each must indicate the other application on the request.
Converting the type of patent application during the prosecution is impossible
Once an invention patent application is filed, it cannot be converted into a utility model patent application (1) during its prosecution, or (2) through a divisional application, vice versa. Therefore, it is important to make the right decision at the beginning.
Therefore, clients should indicate expressly in their instruction letters to us what type of patent they want to apply for or which option above they select to use.
Choosing a right option based on the budget, protection term, object for seeking protection, marketing arrangement and other needs is very important and much helpful.
Should you need more information or any assistance or have any further questions please do not hesitate to contact us. We would be happy to assist.