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January 2019
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A Brief Introduction to Confidentiality Examination of Patent Application to Be Filed Abroad

Author: Cindy Wen

 

. The Provision on Confidentiality Examination of Patent Application to Be Filed Abroad


As stipulated in Article 20 of the Chinese Patent Law, where 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; The procedures and duration, etc. of the confidentiality examination shall be implemented in accordance with the regulations of the State Council; any Chinese entity or individual may file an international application for patent in accordance with any international treaty concerned to which China is party; the applicant filing an international application for patent shall comply with the provisions of the preceding paragraph; the patent administration department under the State Council shall handle any international application for patent in accordance with the international treaty concerned to which China is party, this Law and the relevant regulations of the State Council; for 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.

 

.Frequently Asked Questions


1. Which inventions are required to first apply abroad for a request for a license for confidentiality examination?

 

A technical solution concluded in China to be directly filed abroad as a patent application;

 

An invention or utility model developed in China, for which a formal application has been drafted and for which a patent application is to be filed abroad after having been filed in China); and

 

A patent application to be filed abroad including some technical solution generalized in China.

 

 

2. When to submit a request for a license to file patent application abroad?

 

At any time before filing an application in a foreign country.

 

 

3. Which ways can be adopted by an applicant to make a request for a license to file patent application abroad?

 

Filing a separate request in respect of the description of a technical solution ;

 

Submitting a request for confidentiality examination of patent application to be filed abroad when and after filing an application for an invention or utility model developed in China; and

 

Directly filing an application under the PCT in China, which shall be regarded as making a request for confidentiality examination of patent application to be filed abroad.

 

 

4. How long does it take to grant a license to file patent application abroad?

 

Around 1 month since the filing of a request (in terms of an application not under the PCT);

 

Around 3 months to receive a license notification if an international application is required to be kept secret; and

 

Within 6 months from the filing date of its or his request, if the applicant fails to receive the notification of confidentiality examination of patent application to be filed abroad as made by the Chinese Patent Office, it or he may file a patent application abroad in respect of the technical solution.

 

 

5. In respect of a design, is it necessary to make a request for a license to file patent application abroad?

 

No.

 

 

. Strategies for Filing Such Applications:


1. With regard to only one application to be filed abroad,

 

To file an application under the PCT in China where at least one Chinese inventor or entity is determined as the applicant of the application to be filed abroad.

 

Merits: free of official charges or service fees, and simple procedures.

 

 

2. With regard to applications for both patent for utility model and patent for invention to be filed at the same time,

 

To make a request for confidentiality examination of patent application to be filed abroad while filing these new applications; and

 

To submit a request for confidentiality examination of patent application to be filed abroad for applications both for the invention and the utility model.

 

Merit:

i) less costs and simple procedures; and


ii) reservation of the rights by a rights holder to abandon the patent for utility model in order to avoid the double patenting for the utility model and the invention.

 

 

. A Flow Chart of Confidentiality Examination

 

 

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