China’s Secrecy Review (Foreign Filing License) is very important and should be at the top on the checklist of foreign filing for an invention made in China. Failing to meet such requirement will cause the corresponding Chinese patent application rejected or patent invalidated.
On May 9, 2022, the Reexamination and Invalidation Department of the CNIPA issued a Patent Invalidation Decision (No. 55586), announcing the invalidation of a patent in its entirety due to “not filing a request for secrecy review with the CNIPA before filing outside of China.” This recent decision to invalidate a Chinese patent due to failure in requesting secrecy review draws extensive attention of various IP owners and legal experts.
As for either international corporation having research centers or projects in China or Chinese entities desiring to file foreign patent applications abroad, we provide this Need-to-Know message regarding the Secrecy Review (i.e. foreign filing license) in China for you to better understand the relevant information and find a favorable patent filing strategy.
Secrecy review in China – where the invention is made matters
China’s IP laws and regulations require a secrecy review for any invention or utility model (design is excluded) that is accomplished in China (Hong Kong, Macao, and Taiwan regions of China are excluded) before filing in a foreign country, even when a Chinese application has already been filed in China. Here “accomplished in China” means that the substantive contents of the technical schemes of the invention were made or developed partially or entirely in China.
This Rule underlines the location where the substantive contents of the technical schemes of the invention were made.
If an invention is developed outside of China, a secrecy review is not required, even if an inventor is a Chinese citizen. On the other hand, if the invention is developed in China, even if all inventors are foreign citizens, a secrecy review by the CNIPA is still required.
If your diversified research team has a R&D center in Mainland China or has a collaborative project with a Chinese entity, please see the simplified solution addressing your questions or concerns in the following Q&As.
Scenarios:
Q1: Is a secrecy review required for my project that is developed in the USA but participated by a Chinese inventor?
A1: No.
Q2: Is a secrecy review required for my project that is developed in China but participated by only US citizens?
A2: Yes.
Q3: Is a secrecy review required for our cooperative R&D in both USA and China, i.e. part of the project is developed in the USA while the rest is developed in China?
A3: Yes.
Penalty on violation of the Secrecy review requirement
Violation of the secrecy review requirement would prevent the grant of a Chinese invention or utility model patent. Even when the issue is overlooked by the examiner, the violation can also be a ground for invalidation.
In the invalidation proceeding of a Chinese patent, where a petitioner submits sufficient evidence to prove that the invention was substantively made in China but the Chinese patent failed to go through a secrecy review before a patent application of the same invention was filed abroad, the patentee should provide sufficient counter-evidence to overturn such claim. If failing to do so, the patentee would have to bear possible negative consequence - invalidation of the Chinese patent.
How to Request Secrecy Review in China
To request secrecy review or obtain a foreign filing license, an applicant has to proactively file a request for secrecy review with the CNIPA, and there are three ways to file a request for secrecy review:
WAY 1. Only filing a request for secrecy review before the CNIPA without filing a patent application in China
A detailed Chinese description of the invention to be filed abroad is required.
It takes 2-3 weeks to obtain the secrecy review result.
WAY 2. Filing a request for secrecy review before the CNIPA when or after filing a Chinese patent application
Application documents in the Chinese language are required at the time of the filing of the Chinese patent application.
It takes 3-5 days to obtain the secrecy review result if the request is simultaneously filed with the Chinese patent application.
It takes 2-3 weeks to obtain the secrecy review result if the request is filed after the filing of the Chinese patent application.
WAY 3. Filing a PCT international application with the CNIPA being the Receiving Office
The CNIPA, being the Receiving Office, will automatically conduct the secrecy review on a PCT international application as filed.
Application documents in the English language are acceptable.
It takes 2-3 weeks to obtain the secrecy review result.
And it is not possible to expedite the foreign filing license in China.
Remedy for failure to request secrecy review
There is no remedy for failure to request secrecy review in China. So, it is not possible to obtain a retroactive foreign filing license in China.
Suggestions
It is crucial to duly request secrecy review. It is suggested that the applicant file such request in one of the above three ways soon after the invention is partially or entirely developed in China but before any foreign patent application is filed.
If the invention is jointly developed in the USA and China, we recommend the applicant first obtain a foreign filing license from the USPTO and then file an English PCT international application before the CNIPA as a Receiving Office. The applicant would have the following options for the PCT international application as filed:
Option one: taking the PCT international application as a request for secrecy review only
It is not necessary to pay the official fee for the PCT application.
A provisional or non-provisional US application can be filed after the secrecy review result is obtained from the CNIPA.
Option two: taking the PCT international application as a regular PCT international application
Full official fees have to be paid.
A bypass application or a national phase application can be filed in the USA based on the PCT international application by the 30-month deadline.
If the invention is made jointly in China and any other foreign country, please also make sure whether a foreign filing license is required by the foreign country before filing a Chinese application.
Should you need any assistance or have any further questions please do not hesitate to contact us. We would be glad to assist.
AFD China Intellectual Property Team
The article was originally published through AFD China's website.
