Abstract: This article interprets the provisions on confidentiality examination stipulated in Article 20 of the Patent Law, and provides solutions for foreign/JV enterprises and R&D institutes regarding filing a patent in a foreign country for an invention completed in China.

1. In the amended Patent Law of the PRC, Article 20 provides the following rules regarding confidentiality examination for directly filing a patent application in a foreign country:

“Any entity or individual that seeks to apply for a patent in a foreign country with respect to an invention or utility model accomplished in China shall first report the matter to the administrative department for patents under the State Council for confidentiality examination purposes. Matters such as confidentiality examination procedures and duration shall comply with the provisions of the State Council.

Where a patent application is filed for any invention or utility model for which a patent application is filed in another country in violation of the provisions of Paragraph 1 of this Article, no patent right shall be granted. ”

The original Article 20 of the Patent Law provided that any Chinese unit or individual who intended to file a patent application in a foreign country with respect to an invention accomplished in China should first file the application in China. Since many foreign/JV enterprises or their R&D institutes filed patent applications in foreign countries for inventions accomplished in China in the name of a foreign applicant, the original Article 20 had no binding force on them. Even if such an invention involved national security or significant interest, they could not be restricted.

According to Article 20 of the amended Patent Law, as long as the invention or utility model is accomplished in China, regardless of whether the applicant is a Chinese or a foreign entity, he/it shall request a confidentiality examination from the Chinese Patent Office prior to the filing of a patent in a foreign country with respect to such invention. Otherwise the application for Chinese patent with respect to such invention will not be granted a patent right.

2. Both Article 8 and Article 9 of the amended Implementing Rules of the Patent Law provide detailed explanation of the method for requesting confidentiality examination and the confidentiality examination procedures adopted by the Patent Office as follows:

Article 8: The term "invention or utility model completed in China" as used in Article 20 of the Patent Law refers to an invention or utility model for which the substantive part of the technical solution is completed within China.

Where any entity or individual files a patent application in a foreign country for an invention or utility model completed in China, a request shall be made to the patent administrative department under the State Council to carry out a confidentiality examination in accordance with any of the following methods:

(1) where the patent application is filed directly in a foreign country or an international patent application is submitted directly to the relevant foreign institution, a request shall be made to the patent administrative department under the State Council in advance and the technical solution shall be explained;

(2) where it is proposed that a patent application be filed in a foreign country or that an international patent application be submitted to the relevant foreign institution after a patent application has been filed with the patent administrative department under the State Council, a request shall be made to the patent administrative department under the State Council prior to filing the patent application in the foreign country concerned or submitting the international patent application with the relevant foreign institution.

Where an international patent application is submitted to the patent administrative department under the State Council, a request for a confidentiality examination shall be deemed to have been made at the same time.

Article 9: Where the patent administrative department under the State Council, after receiving a request submitted in accordance with Article 8 of these Rules and upon examination thereof, finds that the invention or utility model concerned might involve national security or another major interest and thus needs to remain confidential, a confidentiality examination notice shall be forwarded to the applicant in a timely manner; where no confidentiality examination notice is received within four months of the application date, the applicant may file a patent application in a foreign country or submit an international patent application to the relevant foreign institution for such invention or utility model.

Where the patent administrative department under the State Council carries out a confidentiality examination in accordance with the preceding paragraph, a decision on whether confidentiality is required shall be made in a timely manner and the applicant shall be notified. Where no confidentiality examination notice is received within six months of the application date, the applicant may file a patent application in a foreign country or submit an international patent application to the relevant foreign institution for such invention or utility model.

Regarding the first method mentioned in Article 8 of the Implementing Rules, the confidentiality examination request and technical solution shall be submitted when a patent application is filed directly in a foreign country or an international patent application is submitted directly to the relevant foreign institution. If the applicant does not receive the notice of opinion for the first-time confidentiality examination within 4 months from the filing of confidentiality examination request, or does not receive the decision of confidentiality examination within 6 months after receiving the notice of opinion for the first-time confidentiality examination, the applicant may file the patent application in a foreign country or submit the international patent application to the relevant foreign institution. However, one obvious disadvantage is that the filing of the patent application may be postponed for 4 to 6 months after the date of accomplishing the invention. Under the current environment of intense market competition, any delay of a patent application may result in irremediable loss to the company.

Therefore, if a foreign/JV company and its R&D institute would like to file a patent application in a foreign country or submit an international application with respect to an invention accomplished in China in the name of a foreign applicant, it shall adopt the second method indicated in Article 8 of the Implementing Rules of the Patent Law, namely filing a patent in China first and submitting the request for confidentiality examination at the same time or at a later time. After the confidentiality examination is approved, the company may file a patent application in a foreign country or submit an international application.   

3. Solutions for a foreign/JV company and its R&D institute for filing a patent application with respect to an invention accomplished in China in the name of a foreign applicant:

(1) If the applicant wishes to obtain a Chinese patent only and not a foreign patent, it may file the application with the China Patent Office without the need of filing a confidentiality examination request.

(2) If the applicant wishes to obtain both a Chinese patent and a foreign patent, it shall file the confidentiality examination request together with the Chinese patent application, and may file an application in a foreign country or submit an international application if it does not receive the notice of opinion for the first-time confidentiality examination within 4 months from the filing of the confidentiality examination request, or does not receive the decision of the confidentiality examination within 6 months after receiving the notice of opinion for the first-time confidentiality examination. If the applicant does not file the request for confidentiality examination when filing a patent application, it shall submit such request no later than the 6th month after filing the application. If the request for confidentiality examination is submitted later than the 6th month, it can not be guaranteed that the applicant can file a foreign application or submit an international application within the 12-month time limit of priority due to the 6-month delay for confidentiality examination. 

4. According to Article 8 of the Implementing Rules of Patent Law, where an international patent application is submitted to the PCT division of the Patent Office, a request for a confidentiality examination shall be deemed to have been made at the same time. It should be noted that a request for a confidentiality examination shall be deemed to have been made at the same time only when an applicant who is qualified to file an international application with the State Intellectual Property Office files an international application to the Patent Office.  For example, if a foreign/JV company or its R&D institute accomplishes an invention-creation in China and files an international patent application to the China Patent Office in the name of a foreign applicant, since the applicant is a foreigner, the China Patent Office will not examine the application, but instead forward the application to the international office directly; under such circumstance, the confidentiality examination request will be deemed not to have been made.  The foreign applicant must submit the request for confidentiality examination and the technical solution to the acceptance division of the Patent Office separately, and submit the international application later when the confidentiality examination is approved. So it is still advisable to adopt one of the above methods to file patent applications.

Lihua Ding            
IP Department Chemistry Group
Watson & Band        

DOWNLOAD:

FROM:

RELATED LAYWER: