Navigating patent filings across China, Hong Kong, and Taiwan requires a well-structured approach to language efficiency, cost reduction, and strategic jurisdiction selection. In The Global IP Matrix Issue 21, Tina Nan, Managing Partner at Cohorizon IP Attorneys, China, provides a comprehensive guide to optimizing patent applications across these three interconnected regions.
China, Hong Kong, and Taiwan share strong economic ties, yet they each have distinct patent systems. Understanding the best filing strategies can help applicants minimize translation costs, maximize efficiency, and leverage regional legal advantages.
Applicants must consider several factors when planning their patent filing process:
Language differences: China uses simplified Chinese, while Taiwan and Hong Kong use traditional Chinese.
Patent Cooperation Treaty (PCT) membership: China is a PCT member, but Taiwan is not.
Hong Kong's patent system: Patents in Hong Kong are based on China’s granted patents through a two-step registration process.
These differences make strategic planning essential for companies seeking broad protection across these three regions.
1. PCT First + Taiwan Filing (Highly Recommended)
This strategy is ideal for applicants filing in multiple jurisdictions, ensuring cost efficiency while maintaining flexibility
Process: File a PCT application within 12 months of the priority filing, then file separately in Taiwan and enter the Chinese national phase at 30/32 months.
Advantages:
Translation efficiency: Since Taiwan filings use traditional Chinese, the same translation can be modified for China’s national phase, reducing costs.
Flexibility: Applicants can evaluate international search reports before finalizing filings in other jurisdictions.
2. China First + PCT/Taiwan Filing
Process: File first in China, then extend the patent to PCT countries and Taiwan within 12 months.
Advantages:
Beneficial for Chinese applicants or inventions developed in China.
Streamlined translation, as Chinese filings serve as a base for international filings.
3. Paris Convention Route
Process: File a priority application outside of China, then file separately in China and Taiwan within 12 months under the Paris Convention.
Advantages:
Works well for applicants filing in fewer than five countries.
Allows flexibility in choosing jurisdictions without using the PCT system.
4. China First under the Paris Convention
Process: File first in China, then extend the patent to Taiwan and other countries within 12 months.
Advantages:
Suitable for applicants targeting fewer than five jurisdictions, including Taiwan.
Ensures early filing protection in China before extending elsewhere.
For countries that recognize China’s granted patents, such as Macao and Cambodia, applicants can request an extension using the China grant notice, making the process fast and cost-effective.
Conclusion
Filing patents in China, Hong Kong, and Taiwan requires careful strategy to optimize translation efficiency, jurisdiction selection, and procedural advantages. The recommended PCT-first approach provides the best balance of cost savings, global flexibility, and legal efficiency.
For more insights from Tina Nan, read the full article in the latest issue of The Global IP Matrix.
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