Is it possible to file both an invention and a utility model application in the Chinese national phase?

14:18, September 01, 2009        

Q: Our client desires to begin entry into the national phase in China for a PCT international application. Is it possible to file both an invention and a utility model application in the Chinese national phase? If not, please advise us as to what circumstances are necessary to enable the filing of both an invention application and an utility model application, and whether an option exits for filing both types of applications based on a PCT international application.

  A: First of all, according to the Patent Law of China, the applicant has to choose one form of patent, such as an invention or utility model, as its national phase application when initiating entry into the national phase in China for a PCT international application. That is to say, it is not possible to branch the PCT international application into both an invention and a utility model application in the Chinese national phase.

  As to the circumstances in which one would be able to file both an invention and a utility model application, we would like to advise the following:

  1. When a Chinese application is filed through a Paris Convention channel, i.e., claiming priority to a foreign prior application, then both an invention patent application and a utility model application can be filed.

  2. When a Chinese application is filed through a PCT channel, i.e., an international application enters into the Chinese national phase, and then, as mentioned above, the applicant has to choose one type of application, such as an invention or utility model, for its national phase application. However, the applicant still has a chance to file a separate utility model application even though an invention application is elected, as long as the international application has not yet been published. In this case, the utility model application would be deemed to be a totally new application, instead of a continuation of the PCT international application in China. In addition, the utility model application may not be able to claim priority to the prior application (if available) on which an international application is based if the time limit (12 months) has expired.

  3. Apparently, if the international application has been published, then the utility model application would lose its novelty if it were filed as a totally new application. In spite of this, the applicant still can file a utility model application and obtain a patent, since no substantive examination is conducted on a utility model application according to Chinese patent practice. However, the patent right thus obtained is not steady and will be likely invalidated by a third party.


Source: China IP

Conference
Live Vote
Clothing made in China register trademarks abroad and become international brands. And then the price soars. What do you think?
Is not supported. It's fraud!
Suppot. It doesn't break the law.
Have no idea.