With the release of the Outline for Building a Powerful Intellectual Property Country (2021-2035), an increasing amount of patent applications for joint inventions made by a Chinese entity/citizen and a foreign entity/citizen have been filed. Regarding Chinese entities, they also tend to file patent applications in different foreign countries so that their inventions can be fully protected and greater benefits can be obtained.
As is well known, according to Article 19 of the Chinese Patent Law, where any entity or individual intends to file an application for a patent abroad with any invention or utility model developed in China, the entity or individual shall file it in advance with the Patent Office for confidentiality examination (also referred to as Foreign Filing License (FFL)).
Considering the above, special notes for FFL are listed by the present author, which may be beneficial to the patent portfolio of prospective applicants.
Firstly, for Article 19, the prerequisite is “developed in China”, which refers that the substantive contents of the technical solution were made within the territory of Mainland China. Many applicants are often concerned that their invention was not “developed in Mainland China”, but with Chinese inventors (with Chinese nationality) included, is the FFL necessary? According to the above understanding of Article 19, the FFL is not necessary as the invention was completed abroad.
Meanwhile, if the invention was made in Mainland China, what are the consequences if the applicant fails to obtain the FFL in China first?
The key point in terms of the consequences is whether the invention needs to be protected in China. In general, if the applicant is not concerned with patent protection in China, there is no need to obtain a foreign filing permit. However, if the applicant hopes to pursue patent protection in China but the FFL was not filed first, the Chinese application might be rejected. Even if the application is granted in China, a third party could request to invalidate the patent based on the grounds that the invention was developed in Mainland China but the confidentiality examination (FFL) was not requested before filing the application abroad.
In respect of obtaining the FFL, three common situations are listed by the present author, as well as the corresponding solutions and required documents for better understanding:
Situation 1: Patent application intended to be filed abroad directly without any first filing in China
In this situation, a “Request for Confidentiality Examination of a Patent Application to be Filed Abroad” and a description of the technical solutions shall be submitted with the CNIPA before directly filing a patent application in a foreign country. Both the request and the description of the technical solutions must be filed in Chinese.
Situation 2: Patent application intended to be filed abroad after the corresponding Chinese patent application is filed at the CNIPA
In this situation, an applicant can file a patent application in China and request a Confidentiality Examination, at or after new filing, prior to filing the application with WIPO at other Receiving Office or in a foreign country. The patent application filed with the CNIPA must be in Chinese, and the most important issue is that the technical solution filed abroad must be identical with that of the Chinese patent application.
Situation 3: International application intended to be filed directly with the CNIPA through the Patent Cooperation Treaty (PCT) as the first filing
In this situation, an applicant can file a Patent Cooperation Treaty (PCT) application with the CNIPA as the Receiving Office directly, by which the request for Confidentiality Examination is considered to be simultaneously filed (i.e., a separate Request for Confidentiality Examination does not need to be filed separately). This procedure allows for the patent application to be submitted in either Chinese or English.
Notably, in this situation, at least one of the applicants should be a Chinese entity or citizen.
As for the applicant issue for the Situations 2 & 3, a further explanation is provided through the following case:
1) Chinese Entity A and Foreign Entity B created a joint invention and filed a CN patent application in the sole name of A;
2) Then they filed a PCT application in the name of A and B claiming the priority of the above CN patent application;
3) Now they intend to enter into the Chinese national phase of the PCT application in the sole name of B.
For this case, the following documents are required to be filed when entering into the Chinese national phase: 1) a priority assignment from Chinese Entity A to foreign entity B; and 2) an assignment from Chinese Entity A and Foreign Entity B to Foreign Entity B.
Actually, the CN patent application can be filed in the sole name of Foreign Entity B directly, by which the above listed two assignments are not required any more as it is not mandatory to include the CN applicant, for example Chinese Entity A, when filing in China even though the invention was developed in Mainland China.
Notably, there may be some confusion since it is mentioned that at least one of the applicants should be a Chinese entity or citizen for PCT application with CN as the receiving office. For this situation, the applicant may list Chinese Entity A as the applicant for a small country (a certain country that is not in the to-be-protected list) only, which is also accepted and meets the filing requirements and then can enter into the Chinese national phase in the sole name of Foreign Entity B.
Finally, the author would like to draw attention to the situation indicated in this article. In addition to the FFL, the technology export license or the freely export technology contract registration certificate should also be obtained, otherwise, the applicant might bear criminal responsibility on the disclosure. More details can be found in the Regulations on the Administration of Import and Export of Technology of People's Republic of China.
In summary, related notes and special notes for FFL are listed by the present author according to general practice, which may be beneficial to the patent portfolio of prospective applicants.