Recently, our firm won the first instance of an administrative litigation case for invalidation of an invention patent, in which it is ruled that the invention patent should be comp...
Introduction In the chemical field, it is difficult to seek invalidation of a patent claiming to have achieved unexpected technical effect. This case provides a strategy for success...
The Confidentiality Review of Chinese Patent Application
Welcome to Linda Liu & Partners on the air. This is Peter Zhang.
China's Patent Law stipulates that any entity or individual applying for a patent in a foreign country for an invention or utility model completed in China shall request the CNIPA for confidentiality review in advance. The so-called invention or utility model completed in China refers to the invention or utility model whose technical solution is substantially completed within the territory of China.
If the above provision is violated and a patent is applied for in China, no patent right will be granted. Even if it is granted, violation of the above provision will also be a reason for invalidation of the patent.
For example, in the Invalidation Decision No. 55586 made by the Patent Reexamination and Invalidation Department on 22/4/2022, the Collegial Panel held that since the patent applicant first filed a patent application abroad without going through the confidentiality review procedures, if there is preliminary evidence indicating that the substantial content of the invention or utility model was completed in China with a high degree of probability, and the patentee cannot provide sufficient evidence to show that the substantial content of the invention or utility model was completed abroad, the patent in question was declared invalid.
The specific ways to request confidentiality review are as follows:
If a patent is directly applied for in a foreign country or an PCT application is filed to a foreign receiving office, a request shall be submitted to the CNIPA in advance, and the technical solution shall be described in detail;
If it intends to apply for a patent in a foreign country or file a PCT application to a foreign receiving office after applying for a patent with the CNIPA, it shall submit a request to the CNIPA before applying for the patent in a foreign country or filing the PCT application to a foreign receiving office.
Where a PCT application is submitted to the CNIPA, it shall be regarded as having simultaneously submitted a request for confidentiality review.
Regarding the format of the documents submitted for confidentiality review, someone asks, can PowerPoint slides be submitted?
If the first patent application is filed in China and a request for confidentiality review is submitted simultaneously, the procedures are relatively simple, and the application documents can be submitted together with the request for confidentiality review. The submitted specification documents can be regarded as the technical information.
If a request for confidentiality review is submitted separately, since the examiners conducting the confidentiality review in the CNIPA are all preliminary examiners, the requirements for technical information are consistent with the requirements for the patent application documents. That is, it must at least include a complete set of claims, specifications, and drawings in Chinese language.
Since the format of PowerPoint slides is quite different from that of the patent application documents, it should not pass the preliminary examination. If the client only has the PowerPoint slides, our attorneys can help to modify them to meet the requirements of the CNIPA.
Someone asks whether it violates the confidentiality review provision to modify the technological solution when applying to foreign countries after the confidentiality review is passed.
We believe that if the inconsistent content in the foreign patent application does not lead to substantial differences between the foreign patent application and the Chinese patent application that has undergone the confidentiality review, but only some clarifying modifications, it usually will not have an impact on the Chinese application, such as causing the Chinese application to be unable to be granted, or invalidated after being granted.
However, if the foreign application results in a new technical solution compared with the Chinese application due to the modifications, it is recommended to reapply for confidentiality review of the new technical solution before filing the foreign application to avoid difficulties in subsequently demonstrating that the new technical solution was not completed within China.
Regarding the time period of the confidentiality review, according to the implementing rules of the Chinese Patent Law, after receiving a request for confidentiality review, the CNIPA, upon examination, deems that the invention or utility model may involve national security or major interests and requires confidentiality, it shall issue a notification of confidentiality review to the applicant within two months from the date of submission of the request; if complicated, the period may be extended by two months.
Where the CNIPA notifies the applicant of conducting a confidentiality review in accordance with the provisions of the implementing rules of the Chinese Patent Law, it shall make a decision on whether confidentiality is required within four months from the date of submission of the request and notify the applicant; if complicated, the period may be extended by two months.
In practice, if a first patent application is filed in China while a request for confidentiality review is submitted simultaneously, the result can usually be obtained within 2-7 days. If a request for confidentiality review is submitted separately, it usually takes 2-3 weeks.
In addition, as mentioned above, PCT applications filed with the CNIPA are automatically subject to confidentiality review. If many entering countries are involved in the future, it is advised to consider filing a PCT international application first in China. As soon as the 105 form and the 301 form are received (can usually be received within 3-4 weeks), the confidentiality review has been passed by default.
That’s it. Feel free to contact me if you have any questions. As a leading IP law firm in China, we are always glad to help. See you next time.
