[co-author: Shyam Pandula]

This article discusses foreign filing requirements in China. Assuming mainland China is the country of invention, the following questions are explored: (1) who needs to seek permission to file a patent application outside China?; (2) what is required to file a patent application outside China?; and (3) if any, what remedies are available if permission is not initially sought to file a patent application outside China?

1. Who needs to seek permission to file a patent application outside of China?

Any applicant who develops the subject matter of its patent application in China must seek permission to file the patent application outside China. Article 20 of the Patent Law of the People’s Republic of China (Chinese Patent Law) states that “[w]here any entity or individual intends to file an application for patent abroad for any invention or utility model developed in China, it or he shall request in advance the patent administration department under the State Council for confidentiality examination.” According to Article 8 of the Rules for the Implementation of the Patent Law, “developed in China” means “substantive contents of the technical solution are made within the territory of China.” For the purpose of initially filing a patent application outside China, the Chinese Patent Law does not consider an inventor’s citizenship or residency. Thus, any applicant who intends to file “any invention or utility model developed in China” must apply for a confidentiality examination in China before seeking patent protection on the same subject matter abroad.

2. What is required to file a patent application outside China?

An applicant can request a confidentiality examination with the Chinese Patent Office before filing its patent application outside China. The confidentiality examination is a review of a description of the patent application’s subject matter by an Examiner to determine whether the invention should remain confidential. The request for confidentiality examination can be filed with or without a corresponding Chinese patent application. But, most importantly, the request must be filed prior to the filing of any foreign patent application. For example, an applicant can file a request for confidentiality examination concurrently with or after first filing a Chinese patent application. The applicant can also file such request without filing a Chinese patent application. In this situation, the applicant would need to wait for approval from the Chinese Patent Office before filing its patent application outside China.

To file a request for confidentiality examination, an applicant should submit a “Request for Confidentiality Examination of a Patent Application to be Filed Abroad,” accompanied with a description of the patent application’s subject matter. There are no fees associated with the request and the applicant should expect approximately six months of processing time as there are no expedited procedures.

3. If any, what remedies are available if permission is not initially sought to file a patent application outside China?

Failure to request a confidentiality examination by an applicant may result in a loss of patent rights in China. According to Article 20 of the Chinese Patent Law, “[f]or an invention or utility model, if a patent application has been filed in a foreign country in violation of the provisions of the first paragraph of this Article, it shall not be granted patent right while filing application for patent in China.” Thus, a Chinese patent application can be denied entirely if a foreign patent application on the same subject matter has been filed in violation of the confidentiality examination requirement.

Considerations for Patent Applicants

Applicants should carefully consider their patent filing strategies for any inventions developed in mainland China to preserve their patent rights. Before filing any applications abroad, applicants should conduct a careful analysis of the contents of the invention and inventorship to determine if a request for confidentiality examination is required.