Foreign applicants may know that they could file invention patent and utility model patent applications having the same specification in China, but how to proceed with this "double protection"?
==Same-day invention and utility model==
It is possible in China to file both an invention patent application and a utility model (UM) patent application on the same day through Paris Convention direct filing. While the UM is usually granted first (within a year; no substantive examination), the invention will undergo a substantive examination and will be granted in 2-3 years.
Since Chinese UM applications only protect physical product with defined shape and/or structure, if applicants want to file both UM and invention patent applications, it is better to make sure that the technology is indeed directed to a product with defined shape and/or structure.
==Alternative same-day invention and utility model==
In practice, considering time limit and business reasons, many foreign applicants choose to file same-day invention and UM in an alternative manner. They choose to file a Chinese UM application through Paris Convention, and choose to file the invention patent application through PCT national phase entry into China which claims the same priority as the UM application. In this manner, it potentially gives the applicant more time to ponder over whether they want to have an invention patent in China.
Lastly, please be aware that it is NOT possible to file both UM and invention patent application through PCT national phase entry. For a PCT application, the applicant must choose to file as EITHER invention patent OR as UM at the time of entering China, and this decision can't be changed.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.