Asia Patent Alliance

About the conversion of applications in Japan, China and Korea 1

Conversion of applications means, for example, converting a patent application into a utility model application without changing the content. The merit of conversion of applications is, that if obtaining a patent right is difficult, you can change it into a utility model and still get the rights. Another merit is that, the examination of novelty and such will be done based on the original filing date.

The following table gives you an outline of the application conversion system.

 

Japan

Korea

China

Patent⇔Utility model

Possible

Possible

Not possible

Patent⇔Design

Possible

Not possible

Not possible

 

The deadline for converting a patent into a utility model in Japan is until 3 months after the examiner’s first decision that the patent application is to be refused or after 9 years and 6 months from the filing date. Conversion from a patent to design can be done within 3 months after the first notification of refusal was sent. In Korea the deadline for converting a patent into a utility model is also 30 days after the first notification of refusal was sent. (It can be extended by two months.)

In China, when filing an application under the Paris Convention, you can switch from patent to utility model or from utility model to patent at the point of filing. It is also possible to file both at the same time. On the other hand, when filing an international PCT application in China you have to choose either patent or utility model. The simultaneous filing system allows you to file a patent and a utility model for the same invention at the same time. Once the patent is granted you abandon the utility model right and thereby obtain the patent right.

Paris Convention Filing in China