As you may know, the 3^rd amendment of the Chinese Patent Law has taken effect on 1 October 2009. On 9 February 2009, we sent our clients and friends an alert sheet regarding the new Patent Law. We are again sending a copy of the alert sheet as a reminder of the imminent implementation of the new Patent Law.  

The State Intellectual Property Office has not yet completed the amendments to (1) the Enforcement Rules of the Patent Law and (2) the Patent Examination Guidelines, which are critical to the implementation of the new Patent Law. We are closely watching the development and will keep you informed.  

As you can see from the attachment, according to Article 20 of the new Patent Law, for an invention completed in China, as of 1 October 2009, it is no longer required to first file a Chinese patent application (i.e., the First File Requirement is abolished). However, before the applicant applies for patent abroad, the invention has to go through the "secrecy examination" by the SIPO. If such "secrecy examination" requirement is not complied with, the Chinese patent application will not be granted and, even if it is granted by mistake, it will be subject to revocation. We would like to call your attention to the above-mentioned secrecy examination requirement and highly suggest that you always verify with your clients regarding where their inventions are completed.  

Please note that the secrecy examination is a new mechanism brought into the Chinese patent system through the Patent Law amendment passed in December 2008. As soon as the SIPO completes and announces the amendment to the Enforcement Rules and the Patent Examination Guidelines, details concerning how to apply for and conduct secrecy examination will become clear. In light of the September 2009 version of the draft amendment to the Enforcement Rules that is available to us, the secrecy examination may most likely proceed as follows:  

A. Filing a Request for Secrecy Examination

1.   If the applicant decides to file a Chinese patent application first, he (she) has to file a separate request for secrecy examination and have the invention undergo the secrecy examination before filing foreign patent application(s).

2.   If the applicant decides to file a patent application in Taiwan, Hong Kong, Macao or any foreign country (through national filing or PCT filing) first, he (she) has to apply for and have the invention undergo the secrecy examination before filing such foreign patent application(s).

3.   If the applicant is qualified to file a PCT International patent application with the SIPO as a PCT receiving office (i.e., the nationality of the applicant or at least one co-applicant is China), when such PCT application is filed, it is presumed that a request for secrecy examination is simultaneously filed.

B. Supporting Documents

When filing a request for secrecy examination, the applicant must submit to the SIPO a written document illustrating the technical content of the invention. We learned from a senior SIPO officer that the SIPO may accept the above-mentioned document in both Chinese language and a foreign language so that they can rely on the foreign-language version to verify the invention concerned (in case there is any inconsistency in the translation). If the applicant has filed a Chinese patent application, he (she) can use the Chinese specification, claims and drawings as the document to support the request for secrecy examination.  

C. Conducting Secrecy Examination

After receiving a request for secrecy examination, the SIPO will review the request and conduct the examination. If the SIPO considers that the invention may relate to national security or major interests, it shall promptly issue to the applicant a notification. If the applicant does not receive such notification 4 months of the request for secrecy examination, he (she) can proceed with the foreign patent filing directly. Where the SIPO issue the above-mentioned notification, it shall issue a decision on whether or not the invention concerned should be subject to secrecy order. If the applicant does not receive a decision within 6 months of the request for secrecy examination, he (she) can proceed with the foreign patent filing directly.  

D. Patent Filing in Taiwan, Hong Kong and Macao

According to our discussion with the SIPO officers, patent filing in Taiwan, Hong Kong and Macao are considered as foreign patent filing, and the applicant of an invention completed in China must have the invention undergo the secrecy examination before he (she) can apply for patent in any of these places. In addition, China does not recognize priority claims based on Taiwanese applications, and vice versa. If an applicant decides to first file a Chinese patent application for an invention completed in China, he (she) has to file the corresponding Taiwanese patent application as soon as the secrecy examination is completed because it is not allowed to claim priority for the Taiwanese application on the basis of the Chinese basic application.  

We hope that you find the above informative and useful. If you have any questions, please contact Daisy Wang at daisywang@leeandli.com