Seeking Protection for Products via Two Types of Patent Applications -- Unique Both-Filing Strategy in China
Both-filing, or dual filing, is a unique strategy in the Chinese patent system, through which an applicant can pursue patent protection for their technical schemes related to products via two types of applications, invention and utility model patent applications. This filing strategy is quite different from a normal filing manner and may be helpful to you when you have an important product and desire to seek both a quick protection and a long-term protection.
When both-filing strategy, instead of normal filing, is recommended?
Under a normal manner for pursuing technical schemes relating to products, if an applicant files only one type of application at the new filing, either invention or utility model, the chosen type of application, after filing, cannot be converted into another type of application. Any divisional application based on this application can only be filed within the same type of application, too.
Under a normal manner for filing patent applications, for the same invention-creation for a product, if the applicant has filed both an invention application and a utility model application which have the same priority date or filing date, and have overlapping scopes that are allowable under both utility model and invention patents, when one application (usually the utility model) is granted first, the other application with the overlapping scopes cannot be granted due to double-patenting issue, unless the overlapping scopes are removed from such other application or amended to different scopes (usually narrowed scopes) in such other application.
Both-filing strategy can help the applicant out of the above two situations.
This strategy originates from the stipulation that where an applicant files both an invention patent application and a utility model application for the same technical scheme relating to products with the CNIPA on the same day under Paris convention, and has indicated such situation in the filing requests of the two applications at the new filings, if the invention patent application is finally allowable but has double-patenting issue with the utility model patent which is in force, the applicant is allowed to abandon the utility model patent to let the invention application be granted such that the overlapping scopes that have been granted in the utility model patent can be reserved in the invention patent.
So by both-filing strategy, the applicant’s technical schemes relating to products can obtain a back-up protection via a utility model patent first, and will also have the chance of being retained in an invention patent for a long-term patent protection when the corresponding invention application is granted.
Normally, a utility model patent application, which goes through the preliminary examination procedure only, will be granted or rejected within 1 year after filing. An invention patent application will be granted or rejected within 3-5 years after filing as it goes through both the preliminary examination procedure and the substantive examination procedure. And, the requirement on inventiveness for an invention patent is higher than that for a utility model patent.
Through both-filing strategy, the applicant can obtain a quick protection for their product under utility model patent (usually within one year after filing) and a long-term protection under invention patent (twenty years from the filing date). The utility model patent obtained in a short time will provide legal support for the production, sales and marketing of the product, reduce the blank period for patent protection before the invention patent application is granted, and is also one of efficient ways to prevent infringement from a third party. When the invention patent application is allowable, if a double patenting issue is raised by the examiner, the applicant can simply abandon the utility model patent and let the invention application including all technical schemes of the invention be granted.
Therefore, if the applicants want to protect their important products which have high level of inventiveness in China, the both-filing strategy is highly recommended.
Notable points for both-filing strategy
1. The strategy is applicable to the Chinese invention and utility model patent applications filed under Paris Convention ONLY.
2. The two applications must be filed on the same day with indication of this strategy in their filing requests.
Should you need any assistance or have any questions regarding the both-filing strategy, please feel free to contact us. We would be happy to assist.