[Patentpractice] Patenting Strategy for China

Thu Aug 29 18:31:06 UTC 2024

Thanks all.

After I wrote my question to the group, a Chinese associate reiterated the requirement of simultaneous filings.  So it will be much easier to file two direct applications on the same day than to try to have one of them be based on the PCT. 

Timothy, thanks for that information on Mexico’s AGP program.  Mexico is not a priority now, but I wanted to know the details if needed.

Again, thank you all.

__________________________________

Siritzky Law, PLLC

1765 Greensboro Station Place, Suite 900, McLean, Virginia 22102-3470, U.S.A.

T  +1.703.260.7390 | M +1.301.461.2307 | F +1.703.260.7480 

This e-mail may contain confidential and privileged material for the sole use of the intended recipient. Any unauthorized review, use or distribution by others is strictly prohibited. If you are not the intended recipient please contact the sender and destroy all copies of the original message.  No attorney/client relationship is or shall be created by the transmission of this email to non-clients of Siritzky Law, PLLC. A signed retainer agreement is required before an attorney/client relationship is formed.

To comply with IRS regulations, we advise you that any discussion of Federal tax issues in this email is not intended or written to be used, and cannot be used by you, (a) to avoid any penalties imposed under the Internal Revenue Code or (b) to promote, market, or recommend to another party any transaction or matter addressed herein.

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> on behalf of Patentpractice Patentpractice <patentpractice at oppedahl-lists.com>
Reply-To: Patentpractice Patentpractice <patentpractice at oppedahl-lists.com>
Date: Thursday, August 29, 2024 at 12:50 PM
To: Patentpractice Patentpractice <patentpractice at oppedahl-lists.com>
Cc: "Valensa, Jeroen" <jevalensa at aosmith.com>
Subject: Re: [Patentpractice] Patenting Strategy for China

Timothy, in China an invention patent and a utility model covering the same invention must be filed on the same day.  This approach is quite common.  In theory, you could file the utility model on the same day as the PCT, and then enter the national stage of in China as the invention patent, but I think most Chinese counsel will discourage this approach.

It's been a while since I worked with German portfolios but I seem to recall that you can simply file the German patent, and can subsequently spin off Gebrauchtsmusters.  There is not the requirement of filing on the same day, like there is in China.

Jeroen Valensa

Assistant General Counsel – Intellectual Property

11270 W Park Place

Milwaukee, WI 53224

* email: jevalensa at aosmith.com

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Timothy Snowden via Patentpractice
Sent: Thursday, August 29, 2024 11:19 AM
To: Patentpractice Patentpractice <patentpractice at oppedahl-lists.com>
Cc: Timothy Snowden <Timothy at thompsonpatentlaw.com>
Subject: Re: [Patentpractice] Patenting Strategy for China

This message has originated from an External Source. Please use proper judgment and caution when opening attachments, clicking links, or responding to this email.
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. 

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> on behalf of Patent Lawyer via Patentpractice <patentpractice at oppedahl-lists.com>
Sent: Thursday, August 29, 2024 10:59 AM
To: Patentpractice Patentpractice <patentpractice at oppedahl-lists.com>
Cc: Patent Lawyer <patentlawyer995 at gmail.com>
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.

[If this is not the right group for this question, please forward the message]

-- Patentpractice mailing list Patentpractice at oppedahl-lists.com http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com 

-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20240829/39b2534e/attachment.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.jpg
Type: image/jpeg
Size: 9840 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20240829/39b2534e/attachment.jpg>