Two Different Types of Patent Applications in China

In the Chinese patent system, an approach known as “both-filing,” or “dual filing,” enables an applicant to seek patent protection for their technical product-related systems through two different forms of applications, namely invention and utility model patent applications. When you have a valuable product and want to secure immediate and long-term protection, this filing method, which differs significantly from standard filing practice, may benefit you.

If an applicant files only one type of application at the new filing—an invention or a utility model—the kind of application selected cannot be changed after submission in accordance with the standard procedure for pursuing technical schemes relevant to products. This application and any divisional applications based on it may only be filed under the same application category.

According to the standard procedure for filing patent applications, if an applicant files both an invention application and a utility model application for the same invention-creation of a product, both of which have the same priority date or filing date and have overlapping scopes that are acceptable under both utility model and invention patents when one application (typically the utility model application) is granted first, the other application with the overlapping scopes is ineligible for the grant because it has been submitted after the utility model application.

The applicant may circumvent the aforementioned two circumstances by using the both-filing procedure.

Therefore, using the “both-filing” strategy, the applicant’s product-related technical schemes can first obtain back-up protection via a utility model patent and then have the potential to be retained in an invention patent for long-term patent protection when the corresponding invention application is granted.

A utility model patent application typically receives a grant or rejection one year after filing without preliminary examination. Within three to five years after filing, an application for an innovation patent will be approved or refused through the primary and substantive examination processes. Additionally, a utility model patent has a lower standard for inventiveness than an invention patent.

The applicant can protect their product for a short period of time under a utility model patent and for a lengthy period of time (twenty years from the filing date) under an innovation patent by using a combined filing approach. The quick-gained utility model patent will offer legal protection for the production, sale, and marketing of the product, reduce the time required before the invention patent application is approved, and serve as one of the most effective barriers against third-party infringement. If the examiner raises a double patenting concern after the innovation patent application is approved, the applicant may simply revoke the utility model patent and enable the invention patent application, which includes all technical schemes of the invention, to be approved.

Therefore, a both-filing strategy is strongly advised if the applicants intend to protect their important products that are highly innovative in China.

The strategy only applies to the Chinese utility model and inventive patent applications submitted in accordance with the Paris Convention.

The filing requests for the two applications must specify this strategy and state that they should be submitted on the same day.