CHANG TSI
Insights
Ⅰ. The Provision on Confidentiality Examination of Patent Application to Be Filed Abroad
As stipulated in Article 20 of the Chinese Patent Law, where any entity or individual intends to file an application for patent abroad for any invention or utility model developed in China, it or he shall request in advance the patent administration department under the State Council for confidentiality examination; The procedures and duration, etc. of the confidentiality examination shall be implemented in accordance with the regulations of the State Council; any Chinese entity or individual may file an international application for patent in accordance with any international treaty concerned to which China is party; the applicant filing an international application for patent shall comply with the provisions of the preceding paragraph; the patent administration department under the State Council shall handle any international application for patent in accordance with the international treaty concerned to which China is party, this Law and the relevant regulations of the State Council; for an invention or utility model, if a patent application has been filed in a foreign country in violation of the provisions of the first paragraph of this Article, it shall not be granted patent right while filing application for patent in China.
A technical solution concluded in China to be directly filed abroad as a patent application;
An invention or utility model developed in China, for which a formal application has been drafted and for which a patent application is to be filed abroad after having been filed in China); and
A patent application to be filed abroad including some technical solution generalized in China.
At any time before filing an application in a foreign country.
Filing a separate request in respect of the description of a technical solution ;
Submitting a request for confidentiality examination of patent application to be filed abroad when and after filing an application for an invention or utility model developed in China; and
Directly filing an application under the PCT in China, which shall be regarded as making a request for confidentiality examination of patent application to be filed abroad.
Around 1 month since the filing of a request (in terms of an application not under the PCT);
Around 3 months to receive a license notification if an international application is required to be kept secret; and
Within 6 months from the filing date of its or his request, if the applicant fails to receive the notification of confidentiality examination of patent application to be filed abroad as made by the Chinese Patent Office, it or he may file a patent application abroad in respect of the technical solution.
No.
To file an application under the PCT in China where at least one Chinese inventor or entity is determined as the applicant of the application to be filed abroad.
Merits: free of official charges or service fees, and simple procedures.
To make a request for confidentiality examination of patent application to be filed abroad while filing these new applications; and
To submit a request for confidentiality examination of patent application to be filed abroad for applications both for the invention and the utility model.
Merit:
i) less costs and simple procedures; and
ii) reservation of the rights by a rights holder to abandon the patent for utility model in order to avoid the double patenting for the utility model and the invention.
As stipulated in Article 26.4 of the Chinese Patent Law, the claims shall be supported by the description and shall define the extent of the patent protection sought for in a clear and concise manner.
OEM is short for Original Equipment Manufacturer, and refers to a business mode in which a brand holder does not directly manufacture its products but entrusts another party with the manufacture and then directly applies the trademark of its own brand on the products. A manufacturer who undertakes such work is called an OEM, and its products OEM products.
Intellectual property rights (IPRs) can not only contribute to a company’s performance and profiting in the market, but help the company obtain opportunities for tax breaks in accordance with the applicable taxation laws and policies.
