Rule 8 of the Implementing Regulations explains the confidentiality-examination requirement in Article 20 of China’s Patent Law. An invention or utility model developed in China is one whose substantive technical content was developed within China. For this purpose, the original article refers to the territory within mainland China’s customs boundary, excluding Hong Kong, Macao and Taiwan.
The following discussion uses an invention to explain how to identify the substantive content of a technical solution.
1. The inventors’ substantive contributions
The named inventors provide a starting point. Under Rule 13, an inventor or creator is a person who makes creative contributions to the substantive features of an invention-creation. A person responsible only for organisational work, providing material or technical facilities, or other auxiliary work is not an inventor or creator.
Confidentiality examination is required for an invention developed by its inventor in China, regardless of whether the inventor is Chinese or foreign. Particular attention is appropriate where one or more inventors are Chinese nationals or residents.
Consider a multinational company with an overseas parent and an R&D centre in China. A technical solution developed by that centre has a foreign project manager, or one based abroad. If the manager merely organises the work and does not participate in substantive R&D, that role does not determine whether confidentiality examination is required. A foreign project manager alone does not establish that the invention was developed abroad.
2. The contents of the claims
The claims can also be considered. The substantive content referred to in Rule 8(1) is content created by an inventor and not disclosed in the prior art. It may correspond to the characterising part of a claim, particularly an independent claim. For an invention developed by researchers in several countries, the distinguishing features of an independent claim can help determine whether it was developed in China.
3. Resolving uncertainty before foreign filing
If it is clear that a technical solution was not developed in China, a Chinese confidentiality-examination request is unnecessary. Otherwise, requesting examination is recommended, particularly where the place of development is uncertain.
Complying adds procedural steps, but overlooking the requirement can have serious consequences. Most inventions and utility models do not concern national security or other vital interests and do not require secrecy. In such cases, submitting a request to SIPO can lead to clearance for foreign filing relatively quickly. By contrast, failing to request examination when it is required may undermine the stability of the corresponding Chinese patent.
If invalidation is sought because required confidentiality examination was omitted, the patent may be invalidated if the invention was indeed subject to that requirement. In a dispute, a competitor may seek evidence that the invention was developed in China and that examination was not requested. Requesting confidentiality examination before foreign filing avoids this uncertainty and reduces the resulting risk to the Chinese patent.
