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Hello everyone, welcome to Linda Liu & Partners on Air! I’m Peter Zhang. Today I am going to talk about the dual-application strategy in China.
Dual-application in China specifically refers to the applications filed both for utility model and invention patent based on the same invention-creation on the same day.
In China, both the invention and utility model are considered as patent. The advantage of Dual-application is that the examination period for utility model in China is short and the patent right can be obtained early. When the subsequent corresponding invention with the same protection scope is granted, the applicant needs to abandon the previously utility model right to avoid double patenting, but this ensures that the patent right protection continues from utility model to invention.
Filing Dual-application is applicable for incoming applications via Paris Convention or the applications filed in China for the first time. It is not applicable for PCT entry. When entering China through PCT, you have to choose only one type, either invention or utility model.
Please note that the granted utility model will be required to be abandoned when the invention patent to be granted has at least one technical solution whose the protection scope is the same as that of the utility model. According to our practice, the scope of protection of the invention will usually be modified different from the utility model, so you may obtain 2 patents through the Dual-application filing.
When the applications for Utility Model and for Invention claiming the same priority date are not filed on the same day, it is not“Dual-application”according to the definition (in the first paragraph of this article). By doing so, you cannot have the invention granted with the same scope of protection as the corresponding utility mode by giving up the utility model.
Therefore, besides the option of filing Dual-application, you can file a utility model in China under Paris convention, and later an invention application as PCT national stage. Both of them may be granted if their scopes of protection are different.
Finally please note, according to the present practice of CNIPA, the examination of the application for invention in the “Dual-application” may be deferred for 4 years.
That is all for today’s topic. Hope it's helpful for you. Feel free to contact me if you have any questions. As a leading IP law firm in China, we are always glad to help. Stay safe and healthy. See you next time.
