You are manufacturing your product in China and want to protect it. However, you want to do it cost efficiently. This article outlines a straightforward and efficient strategy for obtaining protection quickly while keeping expenses low. By filing both U.S. and Chinese patent applications strategically, you can do this smartly. Here’s how to do it.
Step 1: File a U.S. Application with a Fast-Track Request
Start by filing a U.S. patent application with a Track One expedited examination request. The goal is to obtain allowed claims that are “good enough” that you can introduce into China. Under the Patent Prosecution Highway program, these allowed claims have an 80% chance of obtaining allowance in a regular utility patent application in China.
The expedited examination is needed to ensure that your US application would get examination well before your later filed regular utility patent application in China.
Step 2: File Two Applications in China
After you file your US application, at the least, file the Regular Utility Patent Application in China:
- Utility Model Application – This application is designed to give you enforceable patent protection immediately. Below are some of the features of a utility model application. You don’t have to file the utility model application. You can file the regular utility application only if you want. However, in my opinion, the patent term for the utility model is too short. It is only 10 years compared to the 20 year patent term for regular utility patents.
The utility model patent will grant very fast because it isn’t examined substantively. This allows you to sue others in court in China.
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- Timeline: Grants in less than 1 year.
- Examination: No substantive examination, making it fast and inexpensive.
- Term: Shorter term (10 years), but ideal for quick enforcement.
- Limitations: Higher invalidity risk during litigation due to the lack of substantive examination.
- Regular Utility Patent Application – In my opinion, the regular utility patent is the one that you should obtain because it has a longer patent term. Because this is substantively examined, it will take a lot longer to obtain the patent grant. During this period of time, the utility model patent gives you the protection that you need.
To obtain the regular utility patent grant, my recommendation is to introduce the allowed or granted claims in the US application in China. When you introduce these claims, file a patent prosecution highway request. Essentially, The PPH allows the Chinese patent office to rely on the examination work completed by the U.S. Patent and Trademark Office (USPTO), significantly increasing the likelihood of obtaining identical claims in China.
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- Timeline: Grants in 2–3 years (or longer, if delayed intentionally).
- Examination: Substantive examination ensures stronger validity and broader protection.
- Term: Standard 20 years from the filing date.
The utility model provides immediate enforcement rights while the regular utility patent offers long-term, robust protection.
Filing Tip: Use the One-Year Deadline to Save Money
Under the Paris Convention, you have one year from the U.S. filing date to file the patent applications in China. To save costs, consider filing at the last possible moment within this one-year period. This approach allows you to use the extra time to:
- Refine your claims based on U.S. examination outcomes.
- Avoid unnecessary spending if your U.S. application faces unexpected rejections.
If the U.S. application progresses smoothly, you’ll likely be ready to file in China within 6 to 9 months.
What is a Track One Expedited Examination Request?
Track One expedited examination request is a program offered by the USPTO that accelerates the examination of a patent application. By paying an additional fee, you can receive a final decision (allowance or rejection) within 8–12 months, compared to the typical 2–3 years for standard examination. This fast-track process is beneficial when you need to secure patent rights quickly.
What is the Patent Prosecution Highway (PPH) Program?
The PPH program is an international agreement that allows one country’s patent office to expedite the examination of a patent application based on favorable examination results in another country. In this strategy, once claims are allowed in the U.S., you can submit those claims to the patent offices of other countries along with a PPH request. Not all countries have agreements with the United States. You can check here to see which countries participate in the PPH.
If you’re ready to secure comprehensive patent protection tailored to your needs, explore our patent application services to get started. You can also schedule a consultation or call us at (949) 433-0900 to discuss how we can help protect your intellectual property in the U.S. and abroad.