Features

Enforcement of China’s Confidentiality Review Under the New Patent Law Regime

On February 1st, 2010, China’s new Implementing Rules for Patent Act together with the new Guidelines for Patent Examination were put into force. Among many crucial points stipulated in the new Patent Act, the requirement for a confidentiality review set forth in Article 20 of the new Patent Act attracts the most attention. We therefore take a closer look at the relevant regulations of confidentiality review provided in the Implementing Rules and the Examination Guidelines.

Article 20 of the Patent Act prescribes that where an application is filed in a foreign country for a patent for an invention or a utility model made in China, the applicant shall first get an approval from the State Intellectual Property Office (SIPO), the Chinese patent office, by undertaking a confidentiality review. To clarify this provision, Article 8 of the new Implementing Rule defines the meaning of "an invention or a utility model made in China” as “an invention or a utility model whose substantial contents of the technical solution are completed within the territory of China.”

As to the scope of confidentiality, Chapter 5 of the Examination Guidelines elaborates that any invention-creation that involves national security or material interests may fall within the scope. The Patent Office should either decide to conduct the review at its discretion, or review upon the applicant’s request. Both the Implementing Rules and the Examination Guidelines specify the three approaches for filing a confidentiality review as: (1) filing a request for review before the patent application is filed directly in a foreign country, (2) after a patent application is filed with the SIPO, the applicant files a request for review with the intent to file the same patent application in a foreign country, and (3) filing a PCT application with the SIPO, the Chinese patent office, which is deemed to have filed the request for review.

All requests for a confidentiality review should be filed as a hard copy, regardless of whether the patent application is filed with the SIPO.

After implementing the above for almost two months, experiences show that the SIPO is usually able to issue a foreign-filing license within 2 months, and is also willing to accommodate an urgent request where a license may be issued within 3 working days.