On May 9, 2022, Reexamination and Invalidation Department of the CNIPA issued a Patent Invalidation Decision (No. 55586) where the patent was invalidated in its entirety due to "not filing a request secrecy review with the CNIPA before filing outside of China", which attracted extensive attention of many industry and legal experts. In order that you could better understand this requirement in China and find a more suitable patent filing strategy for your inventions made in China, we hereby provide some basic information about the secrecy review (i.e. foreign filing license) in China for your reference.
In China, a secrecy review is always required for an invention or a utility model that is developed in China (inventions developed in Chinese Hong Kong, Macao and Taiwan are excluded), before filing in a foreign country other than China, even if a domestic filing has been made in China first.
Pursuant to Rule 8 of the Implementing Regulations of the Patent Law of China, an invention or a utility model developed in China refers to invention or utility model of which the substantive contents of the technical solution were made within the territory of China.
Secrecy review in China - where the invention is made matters
Pursuant to related regulations in China, for an invention which is substantively made (partially or entirely) in mainland China, no matter whether the inventors are Chinese citizens or not, the applicant must go through a secrecy review conducted by the CNIPA before filing a patent application in a foreign country for the invention.
The above rule does not consider an inventor's citizenship or residency, but focuses on where the invention, specially the substantive contents of the technical solution of the invention, is made. If an invention is made outside of China, even if one or all inventor(s) is/are Chinese citizen(s), a secrecy review by the CNIPA is not required. But, if the invention is made in China, even if all inventors are not Chinese citizens, a secrecy review by the CNIPA is still required.
Penalty if failure to request Secrecy review
If the applicant fails to request secrecy review before filing a patent application in a foreign country, where the same patent application is also filed in China, if the Chinese examiner finds out that a secrecy review should have been requested but is missing, such Chinese application will be rejected.
If the Chinese examiner overlooks or could not find this issue and the Chinese application meets other criteria and becomes granted, any party can request the CNIPA to invalidate such patent on the grounds that no secrecy review was made.
China has no discovery procedure for secrecy review. The burden of providing evidence is on the petitioner. The petitioner should submit sufficient evidence to prove that the invention was substantively made in China but the Chinese application failed to go through a secrecy review before a patent application for the same invention was first filed outside of China. If the patentee could not submit sufficient counter-evidence to overturn the arguments and evidence submitted by the petitioner, the patentee would have to bear the possible negative legal consequences, i.e. the patent will be invalidated due to "a failure to file a request for secrecy review with the CNIPA before filing outside of China".
Ways to Request Secrecy Review in China
In China, the applicant has to proactively file a request for secrecy review with the CNIPA if they want to obtain a foreign filing license from the CNIPA. Generally, there are three ways to file a request for secrecy review:
- WAY 1. Only filing a request for secrecy review with
the CNIPA without filing a patent application in China.
- Detailed description in Chinese language of the invention to be filed in the foreign countries is needed.
- It takes 2-3 weeks to obtain the secrecy review result.
- WAY 2. Filing a request for secrecy review with the
CNIPA when or after filing a Chinese patent application.
- Application documents in Chinese language are required at the time of filing the Chinese patent application.
- It takes 3-5 days to obtain the secrecy review result if the request is filed at the time of filing the application.
- It takes 2-3 weeks to obtain the secrecy review result if the request is filed after the filing of the application.
- WAY 3. Filing a PCT international application with the
CNIPA as the Receiving Office.
- The CNIPA as the Receiving Office will automatically conduct the secrecy review on the PCT application as filed.
- Application documents in English language are acceptable.
- It takes 2-3 weeks to obtain the secrecy review result.
Since it is not possible to obtain a retroactive foreign filing license or expedite the foreign filing license in China, it is suggested that the applicant carefully consider their patent filing strategies for the inventions developed in mainland China to preserve their patent rights in China.
Before filing any applications abroad, it is suggested that applicants should carefully check where the substantive contents of the invention were made to determine if a request for secrecy review needs to be filed with the CNIPA, and make sure to obtain a foreign filing license (if necessary) before filing outside of China.
If the invention is made jointly in the USA and China, a good option is that the applicant obtains a foreign filing license from USPTO first and then files a PCT international application with English application documents 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 any 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 normal PCT international application.
- Full official fees have to be paid.
- A bypass application or a national phase application can be filed based on the PCT international application by the 30-month deadline.
If the invention is made jointly in any other country and China, please also make sure if a foreign filing license is required by that country before filing the application in China.
Should you need any assistance or have any further questions please do not hesitate to contact us. We would be happy to assist.
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.
