How to file a patent in China many believe that when they file a patent in a particular jurisdiction or country, they will be protected in many other countries. Unfortunately, this is not the case. Patent filing can protect applicants with their governments and countries that recognize the filing countries’ patents. Unfortunately, many folks may need to realize that they must file a patent in China.
China has a “first to post” patent policy. Unfortunately, many companies discover too late that they have an issue with a copied item being made and sold in China. So, below are answers to some typical questions people have when they want to file in China.
If you have any questions, please do not hesitate to contact me.
Table of Contents
- How to file for patent protection in China for a U.S. patent application?
- How important is it to file my patent in China?
- Can you patent a product made in China?
- How to file a patent application in China
- What information do I need to file a patent in China?
- Getting patent protection in China?
How to file for patent protection in China for a U.S. patent application?
Many assume that once they have filed a patent application in the US, they are automatically protected in China. Well, they are partially correct. Once a patent is filed and approved in the US, the application will be covered for a short period in China.
Therefore, you will need to undertake a follow-up filing in China after you have been approved in the US. Below are the critical timelines that you should be aware of:
- PCT filings – You have a window of 30 months
- Invention Patent – You have a window of 12 months
- Utility Patent – You have a window of 12 months
- Design Patent – You have a window of only six months.
How important is it to file my patent in China?
It all depends on your level of risk aversion and what others consider the potential revenue your patent can generate in China. On top of this, it is common for people to speculate on a nuisance factor and how much a company or an individual will pay to remove this factory.
China adopts a first-to-file policy to award a patent to an entity. This approach can affect many firms that focus on building and generating sales for their invention in other markets first and then decide to explore and enter the Chinese market. With this approach, many may find that their item has been copied and is being produced in China. When they apply for a patent, it is already registered by a non-related party.
In conclusion, your firm needs to file in China if it intends to sell in China, have the product made in China, or avoid copied products coming out of China.
Can you patent a product made in China?
Yes, you can patent a product made in China. However, it would help if you considered applying for a patent before you have the product made in China. My reason for this is that someone in the factory or anywhere in the supply chain notices potential with your product. They could file the patent under their name, and you would have no recourse.
So it is essential to consider the following when deciding if you should patent a product :
- Does the invention fulfill a need, and will others pay to use the invention?
- If someone else copies your invention, will you be at risk of financial loss?
- Are you afraid of having your invention stolen by another?
If you answer yes to any two of the above, you should consider filing a patent.
How to file a patent application in China?
Adopting an early file methodology to protect yourself in China is critical. It is because, similar to other countries, China’s National Intellectual Property Administration (CNIPA) awards patents to those who are the “first-to-file .”Consequently, securing your invention and intellectual property in China is vital as soon as possible.
There are three approaches to Filing an application in China:
- Direct filing – You can hire a patent agent or lawyer in China who can file directly with the CNIPA in China.
- Follow-Up Filing – You can file a patent in your home country first. Then in China afterward. But note that your home country must be a member state of the Paris convention. You should be aware that China has different filing windows. So for Invention and Utility Model patent applications, it’s within 12 months after your home country filing. However, for design patents, you only have six months.
- PCT Filing – You can file an international patent application. But be aware that you need to present an application within 30 months from the IPA date.
What information do I need to file a patent in China?
It all depends on the type of patent you will apply for and how you will file. It is also important to remember that all documents must be in Chinese. Therefore below are the documents needed for each type of patent:
1. Invention Patent
- Name of the invention;
- Name and address of the person or business making the application;
- Name and address of the inventor;
- An outline of the invention and what elements are to be protected;
- Technical details for the patent;
- An outline of features and specifications which makes the invention unique;
- Drawings and technicalities of the patented area.
2. Utility Patent
- Name of the product;
- Name and address of the person or business making the application;
- Name and address of the inventor;
- An outline of the invention and what elements are to be protected;
- Technical details for the patent;
- An outline of features and specifications which makes the invention unique;
- Drawings and technicalities of the patented area.
3. Design Patent
- Name of the item;
- Contact details of the person or business making the application;
- Name and contact information of the inventor;
- Describe the invention and why the design needs to be protected;
- Drawings and technicalities of the design.
So, Getting patent protection?
So, consider getting patent protection in China. If you are looking for support to file in China or have issues in China, please do not hesitate to contact me. TCI has been providing China support services to our clients for over twenty years.
Aidan Conaty is a director of TCI China and Goodada Inspections.
He can be contacted by email at aidan@goodada.com or be reached at:
- (Europe/ Rest of the World) +353 1 885 3919;
- (UK) +44.020.3287.2990
- (North America) +1.518.290.6604