Confidentiality examination before filing a patent application outside China

1. Introduction

The third revision of China’s Patent Law, which took effect on October 1, 2009, introduced confidentiality examination for an invention or utility model developed in China before a patent application is filed abroad. Such an application may be filed abroad only after compliance with the confidentiality-examination requirements. Breaching the requirement can prevent a corresponding Chinese application from being granted; a granted patent may also be invalidated on that ground. An invention or utility model developed in China is one whose substantive technical content was developed within China.

2. Three filing routes

The State Intellectual Property Office (SIPO) receives requests for confidentiality examination before foreign filing. There are three routes:

① File abroad directly after requesting confidentiality examination.

② File abroad after filing a corresponding Chinese application with SIPO and requesting confidentiality examination.

③ File an international application under the Patent Cooperation Treaty (PCT) with SIPO as receiving Office.

Under route ①, before filing abroad, the applicant submits a confidentiality-examination request and a description of the technical solution to SIPO in paper form. Corresponding foreign-language documents may also be supplied for the examiner’s reference. The technical description must be consistent with the contents of the intended foreign application. If it is not, the corresponding Chinese application may be refused.

Under route ②, the request is submitted with or after the Chinese application, but always before the corresponding foreign application. The foreign application’s contents must be consistent with the Chinese application. The statistics cited in the original article indicate that 60% of applicants submitted the Chinese application and the confidentiality-examination request together.

Under route ③, filing a PCT application with SIPO as receiving Office is treated as simultaneously requesting confidentiality examination. No separate request is necessary.

A PCT application filed with another receiving Office, including the International Bureau, must instead follow route ①. For SIPO to act as receiving Office, at least one applicant must be a Chinese national or resident. If the applicant does not meet this requirement, SIPO may forward the application directly to the International Bureau rather than process it as competent receiving Office. Such a filing is not treated as a request to SIPO for confidentiality examination.

Routes ① and ② require Chinese-language documents; route ③ permits Chinese or English. Route ③ may therefore be more convenient linguistically for some foreign applicants. Route ① may cost less, because the confidentiality-examination request itself has no official fee. Route ② entails the costs of a Chinese patent application, while route ③ entails the expenses of an international application.

3. Examination and time limits

On receiving the request, SIPO examines the circumstances and issues a notification. It may permit foreign filing because secrecy is unnecessary; require foreign filing to be suspended because national security or other vital interests may be involved; or treat the request as not having been made because the submitted documents fail to meet the formal requirements. If foreign filing must be suspended, SIPO may subsequently issue a decision determining whether the technical solution must be kept secret. According to the statistics cited in the original article, approximately 99.9% of examined requests were cleared for foreign filing.

If the applicant receives no confidentiality-examination notification within four months of the request date, it may file abroad. If a notification requires suspension, but no confidentiality decision is received within six months of the request date, foreign filing is also permitted. The four- and six-month periods are statutory waiting limits, not the processing time for every request.

The original article reports an average of approximately two weeks from submission to the first examination result. In practice, under route ②, an applicant filing the Chinese application and confidentiality request in person could sometimes receive the first confidentiality notification together with the filing receipt on the filing date. Most requests were cleared at the first examination. Under route ③, examination was generally completed within one week.

4. Practical considerations

Applicants should determine whether confidentiality examination is required, choose a route and submit the corresponding documents. Information about the applicant and inventors, such as nationality, recent workplace and residence, can help identify where the substantive technical content was developed. Language, cost, examination time and the earliest filing date should also be considered.

A foreign applicant using route ③ should pay particular attention to SIPO’s receiving-Office competence. If no applicant is a Chinese national or resident, the application may be forwarded to the International Bureau without a confidentiality request being deemed filed with SIPO. This consequence should be considered before choosing the route.