There are three ways to apply for patents in the United States:
(1) Apply directly;
(2) The Paris Convention, and
(3) PCT.
Each of the three approaches has its own advantages and disadvantages:
(1) "Direct filing" requires first obtaining a confidentiality review in China, unless the Chinese patent is not considered. Otherwise, there is a risk of the patent being invalidated in China due to the lack of confidentiality review. Additionally, "direct filing" necessitates finding an engineer capable of drafting a U.S. patent application directly, which can be quite challenging. However, once such an engineer with expertise in both Chinese and U.S. patent drafting is secured, the process can become significantly more efficient.
(2) The Paris Convention pathway refers to the process where an invention or utility model patent is filed in China, followed by claiming China's priority within 12 months, then translating and rewriting the application documents to submit to the United States Patent and Trademark Office (USPTO). It is important to note that this involves translation and rewriting, not simple translation, as the U.S. patent system differs significantly from the Chinese patent system. Directly translating the Chinese patent application documents without adaptation would lead to major issues, with the most common being differences in claim drafting requirements. Without proper rewriting, subsequent challenges could arise, ranging from wasted litigation costs to the potential failure of patent authorization.
(3) The PCT route refers to entering the national phase through an international patent application, which is currently a common approach for many Chinese applicants. The advantages include the ability to assess the likelihood of grant and the scope of potential claims based on the international search report during the international phase, as well as a 30-month priority period. However, the drawbacks are also evident: when entering the national phase in the U.S., the translation requirements for the PCT are relatively stringent. A simple comparison with the translation requirements under the Paris Convention reveals that the PCT demands "literal translation," while the Paris Convention allows for "free translation.".
From a protective perspective, the three approaches are best in (1) and worst in (3).
