As Chinese enterprises attach increasing importance to developing overseas markets, the number of patent applications filed by Chinese enterprises has been multiplying rapidly. Since application procedures vary by country, applicants may be confused and inconvenienced by these differences. The series of articles will illustrate the characteristics of the filing systems of various countries by comparing them with the Chinese system. This particular article introduces the differences between Chinese and Japanese patent application procedures.
One of the major differences between the Chinese and Japanese patent application systems is Japan’s patent application conversion system.
Since China does not have a specific procedure designed for patent application conversion requests, once a patent application is filed with the Patent Office, it is impossible to convert the type of patent applied for, either during the examination or after the application is approved. An invention patent application, for instance, cannot be converted into a utility model or design patent application after it is filed.
Despite the foregoing restriction, the assertion of national priority rights -- the filing of a later application for a different type of patent -- can achieve similar goals to a certain extent. For example, if a prior application is filed for an invention patent, the applicant can assert national priority rights by filing a utility model patent application. In this case, the prior invention patent application will be deemed withdrawn, but the priority date of the prior application will apply to the later application. Converting the patent type in this way subjects the applicant to strict constraints based on the specified time for claiming priority. The procedure also requires complex formalities and high costs.
In the Japanese patent application system, however, a patent application conversion system makes it possible to convert patent applications among invention, utility model and design patent applications.
According to Article 10 of the Utility Model Act of Japan, an invention or design patent can be converted into a utility model patent, provided that the conversion is initiated within 9 years and 6 months of the original filing date, or within 3 months of an initial refusal decision is served.
Article 46 of Japan’s Patent Act and Article 13.2 of the Design Act provide that a utility model registration may be converted into an invention or design patent, provided that a request for conversion into an invention patent is filed within 3 years from the date of filing of the utility model registration application.
The patent application conversion system enables applicants to convert the type of patent with lower expense, less stringent time constraints and less complex formalities.
Consequently, if an applicant needs to convert the type of patent after filing an application in Japan due to examination results or a change in market strategy, this goal can be easily achieved through flexible utilization of the patent application conversion system.