Connect with us:
Type something to search...
to navigateto selectESC to close
5 Critical Mistakes to Avoid When Filing Patents in China

5 Critical Mistakes to Avoid When Filing Patents in China

When filing patents in China, many international companies make costly mistakes that could have been easily avoided. Based on our decade of experience handling 3,000+ IP cases, here are the five most critical errors and how to prevent them.

1. Waiting Too Long to File

China operates on a strict “first-to-file” system. Unlike the US grace period, any public disclosure before filing can invalidate your patent application. We’ve seen companies lose patent rights simply because they presented at a conference before filing.

Solution: File your Chinese patent application before any public disclosure, trade show, or academic publication. Consider filing provisionally to secure your priority date.

2. Using Direct Translation Without Technical Review

Patent terminology requires precision. Direct translations often miss technical nuances or use incorrect Chinese technical terms, leading to weak patent claims or office action rejections.

Solution: Work with IP professionals who combine technical expertise with translation skills. Our team includes Ph.D.-level experts who understand both the technology and Chinese patent terminology.

“Their backend QA system caught an error in our drawings that even our internal team missed. That’s real expertise.” - Dr. Andreas Müller, BioPhoton GmbH

3. Ignoring the Patent Prosecution Highway (PPH)

Many companies don’t realize they can accelerate Chinese patent examination from 18-24 months down to 6-8 months using PPH, if they have corresponding patents in other jurisdictions.

Solution: If you have granted or allowed patents in the US, Europe, Japan, or Korea, leverage PPH to fast-track your Chinese applications. This can save significant time and costs.

4. Filing Too Broad or Too Narrow

Some companies file overly broad claims that get rejected, while others file too narrowly and miss protection opportunities. Both approaches waste time and money.

Solution: Conduct thorough prior art analysis specific to China’s patent database. Our strategic approach balances strong protection with realistic grant expectations.

5. Neglecting Portfolio Management

Filing a patent is just the beginning. Without proper maintenance, renewal tracking, and strategic portfolio review, companies lose protection inadvertently or waste money on unnecessary patents.

Solution: Use a systemized platform for tracking deadlines, renewals, and portfolio strategy. Our dashboard provides real-time visibility into your entire China IP portfolio.

Key Takeaways

  • File before any public disclosure
  • Use technical experts for translations
  • Leverage PPH when possible
  • Balance claim scope strategically
  • Implement systematic portfolio management

Ready to protect your innovations in China the right way? Book a consultation with our patent experts today.

Tags :
Share :
Latest Posts
Categories
Tags

Related Posts

Patent Strategy
blog-thumb
By Dr. Sarah Chen/ On 10 Aug, 2024

PPH Fast-Track: How to Accelerate Your China Patent from 18 Months to 6 Months

The Patent Prosecution Highway (PPH) is one of the most powerful tools for accelerating patent examination in China, yet many international companies don't know it exists or how to use it effectively. This guide explains everything you need to know about leveraging PPH for your China patents. What is PPH? The Patent Prosecution Highway is an international framework that allows patent applicants to fast-track examination in participating countries based on positive examination results from another patent office. China has PPH agreements with over 30 countries including the US, Europe, Japan, and Korea. Why PPH Matters for China Patents Traditional TimelineFiling to First Office Action: 12-18 months Total time to grant: 24-36 months Multiple examination rounds commonPPH TimelineFiling to First Office Action: 2-4 months Total time to grant: 6-12 months Fewer examination rounds"Peter and his team guided us through the PPH route, and our first CN patent was granted in 6 months — faster than we expected." - Alex Johnson, GreenCell RoboticsEligibility Requirements To use PPH for your China patent application, you must have:A corresponding application in a PPH partner country (US, EP, JP, KR, etc.) At least one allowed claim in the partner country application Matching claims between the foreign and Chinese applications Not yet started substantive examination in China (for most PPH types)Types of PPH Available in China 1. PPH MOTTAINAI (Standard PPH) Based on allowed claims from a single foreign application. Most commonly used route. 2. PCT-PPH Based on positive reports from PCT International Search or Examination. Particularly useful for startups filing internationally. 3. IP5 PPH Accelerated cooperation between the five largest patent offices (US, EP, JP, KR, CN). Offers the fastest track. Step-by-Step PPH Filing Process Step 1: Prepare Your Foreign Application Ensure you have:Allowance notice or positive examination report Copy of allowed claims Examination history documentsStep 2: File Chinese Application If not already filed, file your Chinese patent application via:Paris Convention route (within 12 months of priority) PCT national phase entry (within 30/32 months)Step 3: Submit PPH Request Before substantive examination begins, submit:PPH request form Allowed claims from foreign office Claim correspondence table Translation of allowed claimsStep 4: Pay Official FeesPPH request fee: Currently FREE in China Examination fee: Standard rates apply Attorney fees: Varies by firmStep 5: Respond to Expedited Examination CNIPA will typically issue first office action within 2-4 months. Response time is shortened to match accelerated timeline. Cost-Benefit Analysis CostsNo additional official fees for PPH request Professional fees: USD 1,200-1,800 Translation costs: Same as regular filing Total additional cost: ~15-20% over standard filingBenefits60% faster grant time Higher grant rates (90%+ vs. 70% average) Fewer office actions Earlier market protection Reduced uncertainty ROI: Significant for time-sensitive technologiesBest Practices for PPH Success 1. File PPH Request Early Submit your PPH request as soon as you have allowance in the partner country. Don't wait for Chinese examination to start. 2. Ensure Claim Correspondence Make sure your Chinese claims closely match your allowed foreign claims. Significant differences can delay or complicate PPH examination. 3. Prepare Comprehensive Translations High-quality translations of allowed claims and examination documents are critical. Poor translations can negate PPH advantages. 4. Have Documentation Ready Gather all required documents before filing:Allowance notice File wrapper documents Claim charts showing correspondence Professional translations5. Work with Experienced PPH Practitioners PPH procedures have specific requirements. Errors can result in rejection of the PPH request, wasting time and money. Common PPH Mistakes to Avoid Mistake 1: Waiting Too Long PPH requests must typically be filed before substantive examination begins. Once examination starts, PPH may not be available. Mistake 2: Claim Mismatches Chinese claims that differ significantly from allowed foreign claims will not qualify for PPH. Mistake 3: Incomplete Documentation Missing or incorrect documents will delay or reject your PPH request. Mistake 4: Wrong PPH Program Different PPH programs have different requirements. Using the wrong program wastes time. Real-World PPH Results Based on our experience with 500+ PPH filings:Average grant time: 8 months (vs. 24 months standard) Grant rate: 95% (vs. 70% standard) Office actions: 1.2 average (vs. 2.5 standard) Client satisfaction: 98%When NOT to Use PPH PPH isn't always the right choice:Claims not yet allowed in partner country Significant claim differences between applications No urgent need for quick grant Strategic reasons to slow examinationConclusion PPH offers dramatic acceleration of Chinese patent examination with high success rates and minimal additional costs. For companies with time-sensitive technologies or market entry plans, PPH can provide critical competitive advantages. The key to PPH success is proper preparation, claim correspondence, and working with experienced practitioners who understand both systems. Ready to accelerate your China patents? Contact our patent team to discuss PPH strategies for your portfolio.

Trademark Protection
blog-thumb
By James Robertson/ On 20 Sep, 2024

China Trademark Registration Guide 2024: Everything You Need to Know

Understanding China's trademark system is crucial for any international brand entering the Chinese market. This comprehensive guide covers everything you need to know about trademark registration in China in 2024. Why Trademark Protection Matters in China China operates on a "first-to-file" system, meaning whoever files first owns the trademark rights—regardless of who used it first internationally. This has led to numerous cases of trademark squatting, where local entities register famous foreign brands before the actual brand owner does. Notable ExamplesNew Balance lost their Chinese trademark and had to pay $16 million Michael Jordan fought a 7-year legal battle over his Chinese name Tesla's trademark was initially registered by a Chinese businessmanThe Chinese Trademark Registration Process Step 1: Comprehensive Search (2-3 weeks) Before filing, conduct thorough searches across:Exact matches in all 45 Nice Classification classes Phonetic similarities in Chinese Visual similarities in logos Translation variationsPro Tip: Chinese consumers often create their own translations of foreign brand names. Search for these "folk translations" to avoid conflicts. Step 2: Chinese Name Selection Choosing the right Chinese name is critical. Consider:Phonetic similarity to your original name Positive meaning in Chinese Cultural appropriateness Memorability for Chinese consumers"The China IP Gateway team helped us build a full defensive trademark strategy. The dashboard showed real-time updates." - Kenji Tanaka, Luminex JapanStep 3: Multi-Class Filing Strategy Most brands need protection in multiple classes:Core classes: Your actual products/services Defensive classes: Adjacent categories where infringement is likely E-commerce classes: Class 35 for online retail is essentialStep 4: Application Filing (1-2 weeks) Required documents:Application forms for each class Clear trademark specimens Applicant identification documents Power of AttorneyStep 5: Examination (9-12 months) CNIPA (China National Intellectual Property Administration) reviews your application for:Absolute grounds (descriptiveness, prohibited marks) Relative grounds (conflicts with existing marks)Step 6: Publication & Registration (3 months) If approved, your trademark is published for opposition. If no opposition is filed within 3 months, you receive your registration certificate. Total Timeline: 12-15 months Pricing Structure Basic Registration: USD 600-900 per classIncludes search, filing, and official fees Monitoring during examination Certificate deliveryComprehensive Protection Package: Custom pricingMulti-class registration Defensive filing strategy Chinese name consultation Ongoing monitoringCommon Challenges & Solutions Challenge 1: Similar Existing Marks Solution: File in specific subclasses or modify your mark slightly while maintaining brand identity. Challenge 2: Descriptive Terms Solution: Add distinctive elements or create a coined term that's unique to China. Challenge 3: Translation Issues Solution: Work with native Chinese trademark experts who understand both linguistic and cultural nuances. Best Practices for International BrandsFile Early: Before entering the market or making announcements File Broadly: Cover all relevant classes from the start Monitor Actively: Set up trademark watching services Enforce Consistently: Take action against infringers quickly Use Professional Help: The cost of mistakes far exceeds professional feesPost-Registration MaintenanceRenewal: Every 10 years Use Requirements: Use within 3 years to avoid cancellation Record keeping: Maintain evidence of use Customs recordation: Register with Chinese customs for border enforcementConclusion Trademark protection in China requires proactive planning and expert guidance. With the right strategy, you can secure strong protection for your brand in the world's largest consumer market. Ready to protect your brand in China? Contact our trademark experts for a free consultation.