JSonnabend

[lazrotoo]

Can you file a PCT application claiming priority to a Chinese Utility Patent?
I say yes and my colleague says he's not inclined to believe that, but can someone here shed light on that, please?
My reasons can follow later in the thread so that there is less bias in the answers.

[ip123]

HI,lazrotoo

My answer is yes.

According article 4 of Paris Convention for the Protection of Industrial Property,
"Any person who has duly fild an application for a patent, or for the registration of a utility model, or of an industrial design, or of a trademark, in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed. ",

and according article 9 of PCT,
"  The international application may contain a declaration, as prescribed in the Regulations, claiming the priority of one or more earlier applications filed in or for any country party to the Paris Convention for the Protection of Industrial Property.  "


So, a PCT application can claim the priority of a untility model from China, which is a country party to the Paris Convention. 

If there is similar topics. pls share with me by MSN: patent live.cn

[BenLiu]

Be very careful when you see the phrases. 

UTILITY MODEL does not equal UTILITY PATENT.
INDUSTRIAL DESIGN does not equal INDUSTRIAL PROPERTY

In a number of countries, there are 3 tiers of industrial IP--Patent, Utility Model, and Industrial Design.  In U.S., only two--(Utility) Patent and (Industrial) Design.  There is no U.S. equivalent of Utility Model protection (In China it is a 5 year protection).  Basically, more inventive Utility Models becomes a patent in the U.S.  Less inventive Utility Models becomes obvious and unpatentable in the U.S.

The basic point is correct.  China application (patent, utility model, etc) is entitled to priority.
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You see this because older Chinese patent law requires this result.  Under the older law, a Chinese inventor must first file his patent applications in China before he can go international.  So you have to file a PCT claiming priority to the Chinese application if the inventor wants to go international.  I suspect that we don't see this more often in U.S. because that PCT is filed with SIPO/China receiving office in the Chinese language.

The current Chinese patent law (3 mo old) removed this "must first Chinese app" requirement.  So I think Chinese inventors desiring international protection will directly file a PCT with SIPO designating China.  But alas, this is the European Patent forum, not China.  So sorry about that monologue.