Tips to ease patent application prosecution in China, including warnings and best practices to help avoid problems and save money and time.

1. 10 TIPS FOR U.S. INNOVATORS
ON SECURING
PATENTS & TRADEMARKS
IN CHINA
© 2018 E.H.Schierman
ELIZABETH HERBST SCHIERMAN
US Patent Attorney from presentation for the China IP Road Show:
What Idaho Businesses Need to Know

2.  TIP #1) FileTM Application w/o Delay
 First-to-file wins in China
▪ Unlike first-to-use in U.S.
▪ Difficult to cancel troll’sTM registration
▪ $$$ to troll for license or for infringement
▪ $$$ to re-brand

3.  TIP #2) Prepare ChineseVersion ofTM
 LiteralWordTranslation: English-to-Chinese
▪ Often not best (e.g., if lack clear meaning, pronunciation)
 Transliteration: Similar sounding
▪ But beware of meaning
 Source: https://www.ipopang.com/blog/business-in-china/should-you-register-your-trademark-in-chinese/
 Translation based on meaning:
▪ Source: https://download.atlantis-press.com/article/12527.pdf

4.  TIP #3) Remember No** Grace Period
 In U.S.: 1-year “grace period”
▪ Public Disclosure + 1 year = deadline
to file U.S. patent application
 In China: no** grace period
▪ **In very rare circumstances: 6-month grace period

5.  TIP #4) CarefullyChoose PatentType
 In U.S.:
▪ Design Patent
▪ Utility Patent
▪ Machines, articles of manufacture, processes, compositions of
matter
 In China:
▪ Design Patent
▪ Utility Model Patent
▪ Invention Patent
▪ Most similar to U.S. “Utility Patent”

6.  TIP #5) Request Examination
 “Examination” – Patent Examiner evaluates patentability of
claimed invention
 In U.S.: Automatic
▪ (Does not apply to provisional applications)
 In China: Not automatic
▪ (Does not apply to utility model applications)
▪ Request examination within 3 years of priority date (or,
otherwise, filing date)

7.  TIP #6) Don’t Fear Software Patents
 In U.S.: Difficult-to-impossible
▪ 35 U.S.C. § 101
▪ Abstract ideas not patentable subject matter
 In China: Easier (perhaps)
▪ If (software) invention made in the U.S., can’t skip right to
Chinese patent application filing
▪ Need foreign filing license 1st

8.  TIP #7) AllowTime forTranslation
 Common U.S.  China patenting approach:
▪ 1st: File U.S. application (optional)
▪ 2nd: File international (PCT) application
▪ 3rd: Enter “national phase” in China by 30-months
▪ Other countries (e.g., Japan) allow translations to be submitted after
national phase entry
▪ National Phase Entry in China may be extended to 32-months with
fee
▪ Prepare translation specifically for Chinese Patent Office (CNIPA (f/k/a
SIPO)) filing

9.  TIP #8) Recraft Application for CN Filing
 Explicit, textural support for all aspects of invention you may want to claim
▪ E.g., “Feature X has a flat top surface”
rather than relying upon a drawing
alone
 Describe particular feature
combinations you may want to claim
▪ E.g., “The pencil has a hexagonal cross-sectional shape, graphite lead, a balsa wood body, and a
rubber eraser” rather than “The pencil may be circular, square, hexagonal, etc. …The body may
be wood, plastic, or metallic. …There may be an eraser.”
 Use Metric System rather than Imperial System
▪ E.g., “177°C” rather than “350°F”
(better yet: “177°C (350°F)”)
FIG. 1:
X

10.  TIP #9) MakeVoluntary Amendments
 Multiple chances to amend Chinese application before
examination
 Add new claims and/or broaden claims
▪ (As-filed application must provide support)
 Amend claims to correspond to allowable claims from
counterpart(s) (e.g., claims allowed in U.S.)
▪ May avoid rejections Saves time and $$$

11.  TIP #10) Use Patent Prosecution Hwy
 Often, 1st application (e.g., in U.S.) examined before Chinese application
 Expedite Chinese examination with PPH Request if:
▪ Same** claims allowed in 1st (e.g., U.S.) patent application
▪ Chinese examination hasn’t started
 Common results by using PPH:
▪ Faster examination (~1 year under PPH vs. ~2 years)
▪ Fewer rejections  saves $$$
▪ Higher rates of allowance

12.  TIP #1) FileTM Application w/o Delay
 TIP #2) Prepare ChineseVersion ofTM
 TIP #3) Remember No** Grace Period
 TIP #4) Carefully Choose PatentType
 TIP #5) Request Examination
 TIP #6) Don’t Fear Software Patents
 TIP #7) AllowTime forTranslation
 TIP #8) RecraftApplication for CN Filing
 TIP #9) MakeVoluntary Amendments
 TIP #10) Use Patent Prosecution Hwy

13. Elizabeth Herbst Schierman
US Patent Attorney
© 2018 E.H.Schierman
LinkedIn: www.linkedin.com/in/EHSchierman
The information in this presentation is of a general nature. It is not directed to
any specific circumstance and should not be taken as legal advice.