1. The Examination on Confidentiality System of Patent Applications in China
It is preferable for those applicants who intend to file their applications both domestically and abroad to pay their attentions to following critical points of the examination on confidentiality:
(1) Article 20.1 of the Chinese Patent Law defines the subject scope of examination on confidentiality in China as "any entity or individual" which is obviously increased compared with previous scope of "Chinese entity or individual", by adding the circumstances of foreign entities and individuals;
(2) Article 20.4 of the Chinese Patent Law clarifies the legal consequences caused by applying for patents in foreign countries without examination on confidentiality in China, i.e. the corresponding Chinese application cannot be granted.
(3) Rule 8 of Implementing Regulations of the Chinese Patent Law clarifies the procedures for applying for patent confidentiality examination requests to foreign countries under different circumstances, which comprises the procedures of examination on confidentiality in case the applicant does not first apply for a patent in China but directly applies abroad.
(4) Rule 9 of Implementing Regulations of the Chinese Patent Law prescribes the time limits of examination on confidentiality.
Article 20 of the Chinese Patent Law stipulates that any entity or individual that intends to apply for a patent for an invention or utility model completed in China shall be submitted to the China National Intellectual Property Administration (CNIPA) for examination on confidentiality in advance. According to such regulations, as long as an invention or utility model is completed in China and intends to file a patent application in a foreign country, it should apply to the CNIPA for examination on confidentiality in advance.
2. Method for submitting a request for examination on confidentiality and the period of reexamination:
Applicants may choose respective ways to request an examination on confidentiality from the CNIPA according to the following three different specific circumstances concerning patent applications to be filed abroad.
(1) Directly submitting a patent application to a foreign country without submitting the corresponding patent application to the CNIPA.
In this case, the applicant has to submit a request for examination on confidentiality and a technical specification of the patent application to a foreign country to the CNIPA before submitting the patent application to the foreign country. If it is obvious that the technical solution does not need to be kept secret, the Chinese examiner will promptly notify the applicant that she/he can submit a patent application to a foreign country; if the technical solution may need to be kept secret, the examiner will conduct further examination on confidentiality and to notify the applicant to postpone submitting the foreign patent application.
The examination on confidentiality is mainly divided into two stages. In the first stage, the examiner conducts a preliminary review to determine whether the technical solution needs to be kept confidential. At this stage, the examiner has to issue to a notification of examination on confidentiality opinions to the applicant. If the applicant does not receive the notification within four months from the date of submitting the examination on confidentiality request, she/he can file the patent application for the technical solution abroad. In the second stage, the examiner has to issue a decision on examination on confidentiality based on the results of the further examination. If the applicant does not receive the decision on examination on confidentiality for applying for a patent abroad within six months from the date of submitting the examination on confidentiality request, she/he can submit a patent application for the technical solution to the foreign country.
It usually takes two to four weeks to receive a notification of examination on confidentiality opinion after submitting a request for examination on confidentiality. Once the notification is received and it is specified that confidentiality is not required, the patent application for the technical solution can be submitted to a foreign country.
(2) Submitting a request for examination on confidentiality at the same time when or after filing the corresponding Chinese patent application with the CNIPA.
In this case, before submitting a patent application to a foreign country, the applicant may submit a request for examination on confidentiality of the patent application of the foreign country at the same time when or after filing of the Chinese patent application. The difference from 2(1) is that applicant needs to submit the request for examination on confidentiality only, without the technical specification. However, it is important to note here that the content of the patent application filed abroad should be consistent with the Chinese patent application.
(3) Submitting a patent application to the CNIPA being as receiving office of the PCT through the PCT.
The applicant can submit a PCT-application to the CNIPA, and such application shall be deemed to have simultaneously filed a request for examination on confidentiality of a foreign patent application. In this case, there is no need to submit a separate request for examination on confidentiality. In this way, it should note that at least one applicant of the PCT-application must have Chinese nationality or a Chinese residence or business place. If the applicant is not qualified to file a PCT- application at the CNIPA, the CNIPA will forward the international application documents to the International Bureau.
If the PCT-application does not need to be confidential, the examiner will process it in accordance with the normal international phase procedure: once the CNIPA issues the Notification of PCT-Application Number and International Filing Date, it means that the examination on confidentiality has been completed and the application, the technical content does not need to be kept secret.
If the PCT-application needs to be kept confidential, the examiner will issue a notification within three months from the filing date that the registration copy and search copy will not be transmitted due to national security reasons to inform the applicant and the International Bureau that the application will no longer be regarded as a PCT-application and the international phase procedure is terminated. On receiving the notification, the applicant is not allowed to submit the patent application abroad.
3. Legal liability for no examination on confidentiality
For any application of invention or utility model filed abroad that violates the Chinese local provisions concerning examination on confidentiality, no patent right shall be granted to its corresponding application filed in China. That is to say, for an invention or utility model completed in China, regardless whether the applicant first applies for a patent in China and then applies for a patent in a foreign country, or first applies for a patent in a foreign country and then returns to China to apply for a patent, if Chinese examiners have evidence during the prosecution to prove that the patent application has been applied for a patent in a foreign country without any examination on confidentiality by the CNIPA, the application in China shall be rejected. As for the granted patent in China, in case of no examination on confidentiality of its corresponding application filed abroad, anyone can submit a request for invalidating the granted patent in China based on the reason of lack of examination on confidentiality.
4. Strategies for examination on confidentiality of patent applications intended abroad
(1) It should note that many countries have provisions similar to Article 20 of the Chinese Patent Law. Therefore, the applicant should consider whether it is necessary to submit a request for examination on confidentiality from other countries before filing a patent application in China. If the application also includes technical content completed in a foreign country such as the United States, France, and other countries, it is necessary to obtain a specific foreign permit before submitting a patent application to China.
(2) If the applicant would like to obtain the examination on confidentiality result in a very short time, she/he may consider submitting the request for examination on confidentiality at the time when filing the Chinese patent application. This strategy can shorten the time for obtaining the result of examination on confidentiality.
(3) For examination on confidentiality by filing a PCT-application with the CNIPA, if the applicant does not have a Chinese nationality and a domicile or business place, an inventor with Chinese nationality or domicile may be considered as the applicant to submit the PCT-application. Under such circumstance, depending on needs, consideration may be given to restrict the inventor's rights being as applicants to relatively small countries or countries where the PCT-application is not going to enter in the future. In this way, the conditions for filing a PCT-application at the CNIPA are met while the inventor’s rights can be kept in a reasonable scope.
References:
[1] Patent Law of the People’s Republic of China (revised in 2009).
[2] Implementing Regulations of the Patent Law of the People’s Republic of China
(revised in 2010).
[3] Guidelines for Patent Examination 2010.
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