[Patentpractice] Patenting Strategy for China

[Timothy Snowden]

Never done it in Mexico or Germany.

Assuming your PCT and Chinese direct filing are identical subject matter, what if you filed the UM ASAP, then file Invention patent app off of PCT. Assuming you can get a positive IPRP during PCT, you could qualify for PPH and move forward even more quickly, while still enjoying UM protection in CN, with likely less duplicative examination efforts. For an imprvoement to a mechanical device, getting a positive IPRP from EPO would likely work well if you use problem+solution approach to argue (assuming you don't get a positive ISR/WO).

Re: Mexico – are you familiar with new APG program in Mexico? AGP = Accelerated Patent Grant – essentially once you get a grant from certain countries (including US and EPO), then you can ask for accelerated grant, which is supposed to be essentially a rubber-stamp examination.

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Subject: [Patentpractice] Patenting Strategy for China


A US company has developed an improved version of a commonly used mechanical device. The company filed a provisional application in December 2023, and production will begin soon in China.  To date, all disclosures have been under NDA to get the production set up.



We will file a PCT application in November.



I am considering the following approach to get quick protection in China:



File directly in China (simultaneously – on the same day):

1.         A regular patent application and

            2.         A Utility model application



The utility model will be a direct filing in China, not a national phase entry of the to-be-filed PCT.

The utility model should be granted within 6-12 months.

The regular patent will take 3-5 years to grant.

Once the regular patent is granted, we can keep both the regular patent and the utility model if there is no overlapping claim scope. If the claim scope overlaps, we would abandon the utility model to avoid double patenting.



I’m consulting with local counsel on this matter, but I would appreciate any thoughts or feedback from the group, especially if anyone has done something similar.



Also, has anyone done something like this in Mexico or Germany?



Thanks in advance.



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