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How to protect your patents in China

With foreign corporations now eager to tap into the potential of its markets, China finds itself a top priority for many patent applicants
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It’s also a top priority for Britain’s Prime Minister, who recently returned from a China trip encouraging economic cooperation between the two nations.

Efforts in recent years have significantly improved China’s IP landscape and the growing number of applications flowing into SIPO each year indicates that companies of all sizes have taken note. As the Chinese market continues to grow, startups should think now about the international market potential for their invention. 

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Armed with some basic information about the patent process, companies can make informed decisions that will help them to maximise their protection where it matters.   

Filing a patent application in china

If you are considering China in your IP strategy, know that there are two basic ways to seek patent protection there – via the Paris Convention or the Patent Cooperation Treaty (PCT). 

For a Paris Convention filing, also referred to as a direct filing, the process typically begins with the filing of a patent application in your home country, which establishes the priority date. You then have up to 12 months from the priority date to file a corresponding application into China. 

Going the PCT route, the process is similar to a direct filing in that you file the priority application, only instead of filing an application into China at the 12-month anniversary you file a PCT application instead. A PCT application is basically an international placeholder. 

An applicant has at least 30 months from the priority date to file the PCT application into any of the 148 contracting countries, including China. For applicants seeking to delay patent costs, the PCT can often be a more advantageous route.

After the application has been filed, SIPO will examine the application to see if it meets the requirements for patentability. Once all rejections are overcome, the patent will be allowed. The patent term will stay in force for 20 years from the filing date so long as the applicant pays the required annuity fees.   

Utility model patents in China

SIPO also offers utility model applications, which can be considered “patent lite” applications. Utility model patents offer ten year protection for new technical solutions relating to shape or structure. They have the same novelty requirement as a normal Chinese patent application, but the inventive step threshold is much lower.

For utility models, only substantive features of the invention that represent “progress” over the prior art are required to show inventive step, versus “notable progress” required for regular patents.   

Why choose to file a utility model over a regular patent for invention in China? Because of the lower requirements for patentability, pendency time for a utility model application is much shorter. 

A utility model patent can often be obtained within four to 12 months of filing. This makes them especially suited for inventions projected to have a shorter lifespan. 

Additionally, official and legal costs for obtaining a utility model patent are about 50 per cent less than that for a regular patent. Depending on your invention and circumstances, a utility model patent might be the easier path towards IP protection in China.

Cost considerations

Startups and small companies are likely to consider other countries in their foreign filing strategies in addition to China, and there are a few best practices that will help them to obtain broader patent protection while minimizing costs:

  • The PCT can be a more cost-effective route if filing into more than just one or two countries, and also buys the applicant time to look for licensees or buyers;
  • Select countries intelligently. Startups need to know where their inventions will potentially be sold and where they can be made in the future. They can then prioritize the countries they want to file into and figure out what their budget will afford;
  • Explore options for outsourcing different parts of the patenting process. PCT national stage filing, for example, is largely administrative and it may be more cost effective to work with a foreign filing service provider versus having your patent attorney handle that step.

Jeff Shieh is Senior Patent Attorney at inovia, a foreign filing provider.

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