New era of filing dual applications in China

There used to be a favourable strategy of so called ‘dual filing’ a Utility Model (UM) application simultaneously with a standard invention application for the same eligible subject matter(s) in China.  The claimed subject matter(s) could then enjoy benefits of both a quick allowance (via the UM application) and a long patent term (via the standard invention application), if both applications were successively allowed.

This article explores the impact on this strategy of the revised Patent Examination Guidelines from the China National Intellectual Property Administration (CNIPA) [1]. These revised Guidelines come into force from 1 January 2026 but may apply retrospectively to applications filed before this date.

Abandon UM

In practice, the UM application is likely to be granted earlier than the standard invention application. Under the previous version of the Patent Examination Guidelines, an applicant can choose to abandon the granted UM application, or to amend the claims of the standard invention application to have different scopes of protection. This enables both a UM patent and a standard patent to be obtained.

However, under the revised Guidelines, with respect to this ‘dual filing’ strategy, the applicant is only allowed to abandon the granted UM by making a declaration within a prescribed period to get the standard invention application through to grant if the CNIPA deems other requirements on granting the standard invention application are met. Even if the standard invention application has been amended to claim a different scope from the granted UM, the UM still needs to be abandoned in exchange for grant of the standard invention application.

Attention must therefore now be paid to making such a declaration abandoning the granted UM within the prescribed period, to avoid the standard invention application being deemed as withdrawn.

Declarations matter

Rule 47 of the Implementing Regulations of the Chinese Patent Law stipulates that for the above strategy of ‘dual filing’, the applicant should declare the existence of the other application upon submitting each of the UM and standard invention applications.

Procedurally, the applicant only enjoys the benefits of above strategy of ‘dual filing’ if this declaration is made upon submission of both the UM and standard invention applications. This initial declaration is made at a different early stage from and thus is separate from the above-mentioned declaration abandoning the granted UM.  

Obtain two patents without initial declaration

The applicant perhaps could attempt not to make an initial declaration upon submitting the UM and standard invention applications, so that the granted UM does not need to be abandoned when the standard invention application (covering a different scope of protection) is ready to be granted.

However, this alternative strategy has its own disadvantages.

First, for the subject matter covered by the granted UM, the patent term is 10 years from the effective application date, shorter than 20 years of any granted standard invention. The standard invention application covering the same subject matter cannot be granted.

Secondly, the applicant needs to claim different acceptable subject matter for the standard invention application, which may not be always preferable, particularly if this results in a narrow scope.

Thirdly, “different scope of protection” may be subject to different standards at different stages of substantive examination, invalidation or litigation. Inappropriately prepared and drafted claims can be invalidated, meaning that the desired subject matter may pass substantive examination, but be unenforceable later on.

Conclusion

More factors now need to be taken into account when using the strategy of filing dual applications in China. If you would like to know more about this topic or other aspects of protecting your IP in China, please reach out to your usual AJ Park contact.