[Patentpractice] Patenting Strategy for China

[Richard Straussman]

That is a good strategy, I have used.  The one caveat is, to my 
understanding, an NDA is worthless in China.   As I understand it, your 
client should have an appropriate NNN agreement in place that is signed 
with the company's "chop" after that have made sure to verify the company.

*Richard Straussman**
* *Senior Counsel*
* Registered Patent Attorney
* Member NY, NJ & CT Bars
*. . . . . . . . . . . . . .*
*Weitzman Law Offices, LLC*
*Intellectual Property Law*
425 Eagle Rock Avenue, Suite 401
Roseland, NJ 07068
*direct line* 973.403.9943
*main* 973.403.9940
*fax*973.403.9944
*e-mail*rstraussman at weitzmanip.com

*http://www.weitzmanip.com
*



On 8/29/2024 11:59 AM, Patent Lawyer via Patentpractice wrote:
>
> 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.
>
> [If this is not the right group for this question, please forward the 
> message]
>
>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20240829/26bcef5c/attachment.html>