Double Filing under China’s New Patent Law

Tsolmon Shar

The Third Amendment of China’s Patent Law, which is in effect since October 1, 2009, introduced one of the important changes on “double filing” issue, which allows applicants to file applications for both invention and utility model patents at the same time. A utility model patent is usually granted within eight to 12 months of filing the application. Currently, it takes between two and four years for an invention patent application to proceed to grant.

Under the new Patent Law, the applications for both an invention patent and a utility model patent for the same invention are permitted only if the following conditions are met:

The two different types of patent application are filed on the same day;

The applicant informs the Patent Office that it is filling two patent applications for the same invention; and

One of the two patents is abandoned when the invention patent is eventually granted.

The advantages of adopting a double filing strategy are similar under both the old and the new Patent law. A patent applicant can obtain a utility model patent quickly and rely on it to deal with infringers while the invention patent is undergoing examination.

Mr. Edward Lehman, managing director of Lehman, Lee & Xu commented on the changes that: “compared to Chinese old Patent Law, the new law reduced the flexibility of the double filing by a requirement which demand the two applications be filed on the same day. In regard of this change, patent applicants must now think further ahead to determine whether patent infringement in China is likely to occur in the near future. If it is, it may be worth applying for both a utility model patent, which can be obtained quickly and readily enforced, and an invention patent”.

Lehman, Lee & Xu, is widely recognized as one of the largest and influential law firms in China, provides diversified legal services. The Intellectual Property Team, is one of the most highly regarded professional teams in Lehman, Lee & Xu Law Firm, provides a full range of China Patent Services which includes prosecution, licensing and dispute resolution. The IP team at Lehman, Lee & Xu, consists of senior partners and professional lawyers with many years of IP and legal advisory experience. The lawyers in this team are familiar with domestic IP laws and international treaties and some have backgrounds such as in electronic engineering, software design, e-commerce, international trade and other professional fields. Lehman, Lee & Xu Law Firm’s IP team members bring their extensive knowledge of IP laws to the team for the benefit of their clients.

To learn more about the Lehman, Lee & Xu, please visit to website: www.lehmanlaw.com
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www.lehmanlaw.com