China has a strict regulation of foreign patent filings for inventions that are completed in the territory of China. If inventions were created in China, patent applicants need to first obtain a foreign filing license (FFL) from the CNIPA before they can file patent applications abroad. Any violation of this regulation will make the Chinese patents in relation to this technology invalid.
The FFL requirement not just applies to inventions solely created in China, but also applies to technologies where part of the inventions were completed in China. Due to the increased number of collaborations between inventors from different countries, we see an increased need from both Chinese companies and foreign companies for requesting a foreign filing license from the CNIPA.
The question is how to obtain a foreign filing license from the CNIPA? Is it mandatory to have a first filing in China? And how long does it take?
Briefly, there are three ways to obtain the FFL from the CNIPA.
Option I. Have a first filing in China, and request FFL simultaneously. For this option, a full patent document must be filed to the CNIPA in Chinese language.
Option II. Directly obtain an FFL from the CNIPA without a first filing in China. For this option, at least the technical disclosure must be submitted to the CNIPA in Chinese language. Once the FFL is obtained, the Applicant can choose to have a first filing in other countries/regions.
Option III. First file a PCT application by choosing the CNIPA as the receiving office. For this option, the PCT application can be filed in English, and the FFL is considered as being automatically requested by the Applicant.
It normally takes several days to several weeks for the CNIPA to issue the foreign filing license. However, according to the Chinese Patent Law, the CNIPA is allowed to hold off issuing the FFL for as long as 4 months, if the technology is sensitive.
For non-Chinese Applicant, Option III seems to be more desirable, because the PCT application can be filed in English and does not have to be translated into Chinese for filing, as opposed to Option I or II.
Option III also allows a quick establishment of an earliest priority date (or filing date) WITHOUT any delay caused by the CNIPA's confidentiality examination, as opposed to Option II.
Procedurally, however, if the Applicant chooses to proceed with Option III, the Chinese inventor (or the Chinese collaborating partner) is recommended to be tentatively listed as a co-applicant to make sure that the CNIPA could act as a receiving office for said PCT application. The co-applicant could be removed subsequently at national stages in individual countries or regions, if desirable.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.