Foreign Filing License

The Third Revision of the Patent Law of the People's Republic of China and Its Implementing Regulations in view of its Ruling about Confidentiality Examination (= Foreign Filing License) and comparison of the Chinese regulation with the situation in Europe

P. Rosenich (LI), Chair Disciplinary Committee

(This article is based on an article of CNIPA of 17.07.2013 and on careful talks with several Chinese Patent Attorney Colleagues)

Introduction:

For European Patent Attorneys it is often difficult to adapt their activities also in view of laws in other jurisdictions. However in certain circumstances this is of outmost importance, as todays IP-Management focuses often worldwide and not only on limited European Countries. On the other hand R&D is often also spread over various countries including Peoples Democratic Republic of China. This is because many European firms do have also subsidiaries in China, where production and R&D may occur. Such R&D activities are often consolidated between the Chinese Subsidiaries and the Mother Company in Europe. From this follows that often inventors cooperate over the boarders.
When it comes to inventions which should be filed in Europe or elsewhere it should be noted that various countries have special laws regarding the first filing of such Patent Applications.
This is true for many states in the world. This article deals with the particular situation in China in detail and gives a rough overview about the situation in Europe.

Paris Convention:

Certainly Paris Convention allows in principle to file patent applications in any Member States by any members of Member States, however it does not hinder Member States to use restrictive rules, when it comes to inventions which have been invented in said Member States.
Currently, countries like China, the United States of America, India, Singapore, Australia, New Zealand, United Kingdom, France, Germany, Italy, the Netherlands, Israel and Russia all have confidentiality examination or prosecution procedures for applications to foreign countries.

That means that in those countries the State rules that inventions “which belong to these states” may be restricted when it comes to be filed in foreign countries.

Often these restrictions are in view of defense or weapons or energy. Those states often require having a first look into a new invention, before they would allow an inventor to file such inventions also abroad. In rare circumstances such States may also reject the right to file in a foreign country.

In the Third Revision of the Patent Law of the People's Republic of China and Its Implementing Regulations China adopted improved rules in this respect.

The Patent Office (CNIPA, SIPO) of the People's Republic of China initiated the revision process in 2005, conducted comprehensive researches, and released the first draft of the amendments for public comments in August 2006. The newly revised patent law came into force on 01.10.2009.
SIPO submitted equally the Draft Amendment for Review of the Implementing Regulations of the Patent Law of the People's Republic of China to the State Council in February 2009. The revised Implementing Regulations came into force on February 01.02.2010, by which stage, the third revision to the Patent Law and its Implementing Regulations had been completed.

The main points of the revision to the patent law:

The main points include the following: enhance the threshold of patentability; provide regulations on the protection of genetic resources; improve industrial design system; improve the confidentiality examination system for applications to a foreign country; invalidate the designation of foreign-related patent agencies; increase SIPO's/CNIPA’s responsibility for the distribution of patent information; endow the right holders of industrial design the right of offering to sell, introduce a pre-litigation preservation measures, and include the cost of the right holder incurred for stopping the infringing act to the calculation of damage compensation; codify prior art defense; allow parallel import; provide exceptions of drug and medical apparatus experimentation; improve the compulsory license system, and so on.

Confidentiality Examination (foreign filing license):

Out of the main points of the revision this article concentrates on the confidentiality examination system for applications to a foreign country.

The confidentiality examination system has existed since the implementation of China's patent law in 1985.
During past practice up to 2009, problems were spotted with the above mentioned provisions. Firstly, the then active prescription on filing an application first in China left the applicants with no flexibility of choice; secondly, no legal liability was provided for filing first to a foreign country in violation with Article 20 of the Patent Law; thirdly, there was also confidentiality examination for applications of industrial design, which is actually not necessary; and fourthly, the procedure of confidentiality examination needed some improvements. In order to solve these problems, for the third revision, the following amendments were made:

The wording of filing first the application in China was changed to must go through confidentiality examination first;
It was prescribed clearly that there is no confidentiality examination for industrial designs;
It was clearly prescribed the legal consequence of filing in a foreign country without confidentiality examination, which is that the Chinese patent application won't be granted in China, and criminal liability will be prosecuted under the condition of divulgence of national secrets;
Improved procedures of confidentiality examination were provided.

The provisions of the revised Patent Law and its Implementing Regulations:

As long as the invention-creations are finished in China, no matter the applicant is a Chinese entity or an individual, or a foreign entity or a foreign individual, the application must go through confidentiality examination in SIPO/CNIPA.

But take into consideration that in some circumstances, applicants wish to apply for a patent in foreign countries first, or don't intend to apply in China at all, the revised Patent Law doesn't require the applicant to file a patent application on the same invention-creation in China.

For those who wish to apply patent applications directly to foreign countries, the applicants shall however first submit to SIPO/CNIPA a request for confidentiality examination and a description of the technical solution/invention.

First filing in China and subsequent filing abroad:

If the applicants however wish to file an application in China first, and then in foreign countries, the applicants can submit the request for confidentiality examination together with the application documents, or after the application date. However this has to be acomplished before the applicants file the application in foreign countries.

Besides, where applicants file with SIPO/CNIPA an international PCT patent application in Chinese or English, it is automatically deemed that the applicants submitted a request for confidentiality examination at the same time.

After receiving the request for confidentiality examination or after receiving a PCT Patent application, SIPO/CNIPA will send a notification of confidentiality examination to the applicants if SIPO/CNIPA believes that the application for invention or utility model might involves with State security or major interest, and therefore needs to be kept secret. Otherwise, if the applicant doesn't receive the notification of confidentiality examination within four months from the date of submitting the request, it is deemed that the applicant can file applications in foreign countries.

For those applications of which the notification of confidentiality examination has been sent, SIPO/CNIPA will make timely decision on whether the application shall be kept secret. If the applicant hasn't received the decision made by SIPO/CNIPA within 6 month from the date of submitting the request, it's deemed that the applicants are allowed to file applications to foreign countries.

Past practices prove that the procedure of confidentiality examination doesn't pose irrational hindrance to the applicants for applications to foreign countries. For those who submit the request for confidentiality examination together with the application documents, SIPO/CNIPA sends the notification of either approving or suspending to file applications to foreign countries usually together with the notification of the receiving of the application. Statistics show that, for those who submit the request for Confidentiality Examination after applying patent application in China or submit the request in the form of technical solution descriptions, the average pendency is 30 days from submitting the request to issue the first notification. The average pendency for confidentiality examination of international patent applications is 2 to 3 weeks, which is far shorter than the prescribed timeline of 4 and 6 months.

That means that, if an applicant of a Chinese patent application who also requested a Confidentiality Examination foreign filing license can file a foreign patent application within a few weeks after he filed the Chinese patent application. Certainly then the Paris Convention Priority Claim may be filed, so that nothing is lost because of the delay.

One may think, that a Chinese patent application might be dropped anyway after a foreign filing license was received could not be punished by loosing the Chinese patent application. However it is to be reminded that the interests of a State may change – that means that inventions which were not to be kept secret in past years might fall under secrecy obligations in the future. Hence if a foreign filing was done before SIPO/CNIPA decided, a criminal act of transferring secret information to a foreign country might have happened. But even if the foreign filing license was given, a prior filing in a foreign State does constitue an infringement of the law. The consequences of such infringement can not be fully predicted, as the relevant law and view of Courts may change over the time.

In a nut shell:

Applicants who’s invention was finished in China need to request and receive a foreign filing license before they file a patent application outside China.

Comparison of the above presented law and practice with the situation in Europe:

Among the Member States of the EPC applicants find basically three categories of States:

States with a similar regulation as in China, namely insofar as the States takes its right to check applications first to see their contents before applicants move further. In these states basically – like in China – all inventions which have been made in said countries or which have been made by companies of these countries or by citizens of these countries, have to be filed with the national patent office first (either as a national application or as an European Application or as a PCT-Application): BG,FR,GR,IT,PL,PT,ES,HU,CY;
States with a more liberal regulation – insofar, as this regulation orders applicants only in certain circumstances to file first in said countries; especially when the application contains a state secret, is related to defense or is security relevant. (certainly in cases of doubt applicants treat applications in such countries about the same as under A): AL,BE,DK,DE,MK,FI,HR,LT,LU,MT,NL,NO,RO,SE,SK,CZ,TR,UK;
States with a very liberal approach; with no restrictions as to the rights of applicants to file first also in foreign countries: EE,IE,IS,LV,MC,AT,SM,CH,RS,SI.

More details about the EPC-Member States can be taken from the information in the EPO-brochure "National law relating to the EPC" (19^th edition), Section II, column 2, as of page 71).