China is a first-to-file jurisdiction. The person who files the patent application first gets the patent, regardless of who invented first. A foreign company that invents something and of files a patent application in China after a competitor has filed for the same invention loses the patent rights in China. The rule is simple, but the strategic implications for foreign companies — particularly those that exhibit products at Chinese trade shows or that discuss technical details with Chinese partners — are significant.
Here’s how the Chinese patent system works for foreign inventors, how the first-to-file rule affects patent strategy, and how to protect priority.
The First-to-File Rule
Under the Chinese Patent Law, the right to a patent belongs to the person who files the patent application first, provided the invention is patentable. The rule applies to invention patents, utility model patents, and design patents. A foreign inventor who invented the technology three years ago but didn’t file a patent application in China until last month — and a Chinese competitor filed for the same technology two months ago — loses the patent.
The first-to-file rule replaced the first-to-invent rule that existed in some jurisdictions historically. The United States converted to a first-to-file system in 2013, and the global standard is now first-to-file. The rule incentivizes early filing — the inventor who invents something and files the patent application promptly is protected against a later-filing competitor.
The first-to-file rule applies with a temporal priority mechanism — the Paris Convention priority right. Under the Paris Convention, a patent application filed in China within 12 months of the first filing of the same invention in another Paris Convention country claims the priority date of the first filing. A foreign inventor who files a patent application in the United States on January 1 and files a Chinese patent application for the same invention on December 1 — within the 12-month period — claims the January 1 priority date. The Chinese application is treated as if it was filed on January 1 for purposes of determining who filed first.
The priority mechanism is the key to protecting a foreign inventor’s patent rights in China. The inventor files the first application in the home country — or in any Paris Convention country — and then files the Chinese application within 12 months, claiming the priority of the first application. The priority date establishes the filing date for the Chinese application, and the inventor’s right to the patent in China is protected for 12 months from the first filing.
The Grace Period
The Chinese Patent Law provides a grace period — a period before the filing date during which a disclosure of the invention by the inventor doesn’t destroy the novelty of the invention for Chinese patent purposes. The grace period is six months from the date of disclosure. A disclosure that occurs within six months before the Chinese filing date doesn’t invalidate the patent.
But the grace period has limitations. The disclosure must be by the inventor or by a person who obtained the information from the inventor — a disclosure by a third party who independently discovered the invention is not covered. The disclosure must be a specific type — an exhibition at an international exhibition recognized by the Chinese government, a publication at a designated academic conference, or a disclosure without the consent of the applicant — for example, a breach of confidentiality by a Chinese partner.
The grace period is a safety net, not a strategy. A foreign inventor who relies on the grace period instead of filing promptly is taking a risk — a third party who independently discovers the invention and files a patent application before the inventor files destroys the inventor’s novelty. The grace period only covers the inventor’s own disclosures, not third-party filings.
The practical advice is not to rely on the grace period. File the patent application in China before disclosing the invention in China — before exhibiting the product at a Chinese trade show, before discussing the technical details with a Chinese business partner, before publishing the technical paper that describes the invention. An early filing protects the patent rights, and the priority mechanism allows the inventor to claim the home country filing date.
The Three Types of Patents
China has three types of patents: invention patents, utility model patents, and design patents. The invention patent is the standard patent for a new technical solution — a product, a process, or an improvement. The examination is substantive — the patent office examines the invention for novelty, inventiveness, and practical applicability — and the term of protection is 20 years from the filing date.
The utility model patent is for a new technical solution for the shape, structure, or combination of a product. The examination is formal — the patent office checks the application for completeness and for compliance with the formal requirements — and the term of protection is 10 years from the filing date. The utility model patent doesn’t require substantive examination for inventiveness, and it’s granted faster than an invention patent.
The utility model patent is strategically useful for an invention that’s incremental — a structural improvement rather than a fundamental technological breakthrough — and for an invention that needs protection quickly. A foreign inventor who has improved the structure of a product that’s already in the market can obtain a utility model patent within six to twelve months — compared with two to three years for an invention patent — and can enforce the patent against infringers while the invention patent application is pending.
The design patent is for a new design for the shape, pattern, or combination of the color and the shape or pattern of a product. The examination is formal, and the term of protection is 15 years from the filing date. The design patent is for the appearance of the product, not for the function, and it protects against copying of the design.
A foreign inventor can file for both an invention patent and a utility model patent for the same invention — a dual filing strategy. The utility model patent is granted first — within six to twelve months — and provides protection while the invention patent application is being substantively examined. If the invention patent is granted, the utility model patent is abandoned, and the invention patent provides the longer term and the stronger presumption of validity.
The Application Process for Foreign Inventors
A foreign inventor — an individual or a company that doesn’t have a residence or a place of business in China — must file the Chinese patent application through a Chinese patent agent. The patent agent is a Chinese patent attorney who’s registered with the China National Intellectual Property Administration — CNIPA — and who’s authorized to represent foreign applicants.
The application is filed in Chinese. The foreign inventor provides the specification, the claims, the drawings, and the abstract in the inventor’s language — English, German, Japanese, or another language — and the patent agent translates the application into Chinese. The translation must be accurate — a translation error that changes the scope of the claims can invalidate the patent or limit its enforceability — and the foreign inventor should review the translated application with a bilingual technical expert if possible.
The application must claim the priority of the foreign application if the Chinese application is filed within 12 months of the first foreign filing. The priority claim requires a certified copy of the priority application — the first foreign application — from the patent office where it was filed. The certified copy must be filed within 16 months of the priority date.
The foreign inventor must comply with the Chinese patent examination guidelines, which may differ from the guidelines in the inventor’s home country. The Chinese patent office has specific requirements for the description of the invention, the formulation of the claims, and the disclosure of the best mode — the best way of implementing the invention known to the inventor at the filing date. A patent agent who’s familiar with the Chinese examination practice can draft the application to comply with the Chinese requirements while maintaining the scope of protection.
The Enforcement Strategy
A Chinese patent gives the patent holder the right to exclude others from making, using, offering for sale, selling, or importing the patented product or process in China. The right is enforceable through the Chinese court system — the specialized IP courts in Beijing, Shanghai, and Guangzhou, and the IP tribunals in other cities — and through administrative enforcement by the local IP offices.
The enforcement strategy depends on the nature of the infringement and the identity of the infringer. A patent infringement by a Chinese manufacturer who exports the infringing product to the foreign inventor’s home market can be enforced at the Chinese border — the patent holder records the patent with Chinese Customs, and Customs seizes the infringing exports. The border enforcement is faster and less expensive than litigation because Customs is the enforcer, not the patent holder.
A patent infringement by a Chinese manufacturer who sells the infringing product in the Chinese market can be enforced through the court or through the administrative route. The administrative route — a complaint to the local IP office — is faster and less expensive than litigation, but the remedies are limited — the IP office can order the cessation of the infringement but can’t award damages. The court route — litigation — can award damages, including the patent holder’s lost profits, the infringer’s illegal gains, or statutory damages of up to 5 million RMB for an invention patent.
A foreign patent holder who doesn’t have a Chinese subsidiary that can monitor the market and enforce the patent should consider appointing a Chinese patent agent or a Chinese law firm to conduct periodic market monitoring and to enforce the patent when infringement is detected. The enforcement cost is a fraction of the value of the patent, and the visible enforcement deters additional infringers.
