No Chinese patents for inventions outside China?
Danny Friedmann, our China Law expert put up an interesting post at IP Dragon, his popular China IP blog last week: Discover Your Invention in China Or Lose Protection.
Some are saying that China is considering disallowing patents to inventions made outside China. What if this were try and it forced other large economies to go down the same route and what about inventions co-invented in two countries?
Setting aside the macro economic and political issues for a moment…
So what can you do about such a change? One suggestion on Danny’s bog is to always have a Chinese subsidiary or collaborator involved in your R&D. A bit awkward and expensive, but if you have to do it, so be it.
Perhaps another is to start campaigning or educating to avoid this? What would you add?
7 Comments on “No Chinese patents for inventions outside China?”
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Duncan, just to be clear, I understand the new rule to say inventions made in China have to be first-filed in China, not that China is thinking about disallowing patents for inventions made outside of China. Not a convenient rule, but, in my opinion, not an outrageous rule to be adopted by a soverign country with growing influence in the world.
Interestingly, I contacted a Chinese patent law expert a while back and she told me that filing in China first when an invention was made in China was the preferred procedure given an “uncertainty” in the law. Maybe this is the clearing up of that uncertainty. My recollection is that if a Chinese national was involved in the inventing, then you had to file in China first. Not an unusual occurrence for an invention made in China. For my company that was was starting to outsource manufacturing to China, I thought this rule was a pain, but was glad I found out before I filed at Chinese-invented invention in the US and tried to nationalize China.
As an aside, I am wondering whether this new rule is in harmony with the Paris or PCT Conventions.
Thanks Jackie, that would make a lot of sense. That’s similar to how it currently works in India – though the rule there is that any invention made by a resident must be filed there first followed by a 6 week period before you can file elsewhere. I think Paris and PCT are fine. I think TRIPS is potentially an issue, but the Indian version is fine, though.Anyone else want to comment?
Duncan;
On my very cursory reading, I agree with Jackie that the current intent is to require Chinese citizens to first file in China. Many countries have such a provision (even little insignificant NZ!), so the real issue is the manner in which it would be applied. In NZ there is an obligation to seek authority from IPONZ to first-file overseas, and that is granted automatically. I inferred (without any corroboration) that this action was instituted to stay clear of risks of non-compliance with Paris/PCT/TRIPS obligations.
If that same regime was instituted in China it would have no real moment.
Hi, everyone, regarding the first-filing-in-China requirement, I have the following information and comments:
The current Patent Law provides in its Article 20 that any invention made in China, a patent for which must be first filed in China via a designated patent firm licensed by the SIPO of China. This provision means that
i. any invention completed in China, a patent for which must be first filed in China;
ii. there is no requirement for the nationality of the inventor (s) , Chinese, or non-Chinese or Chinese with non-Chinese;
iii. any invention made by a Chinese out of China, a patent for which can be filed first out of China.
Despite of the above provision, for those inventions not falling in the list of limited or prohibited technologies published by the Ministry of Commerce of the PRC, they can be transferred to out of China and patents for which can be filed first out of China.
In the draft of the new Patent Law, the first-filing-in-China requirement will be replaced by foreign filing license.
The Patent Law (Draft) provides in Art.4 that any entity or individual who wants to file a patent application abroad with respect of an invention made in Chinashall obtain the official approval/license from the competent authority of state council, which can also be found in the US Patent Act. And the same draft provides in Article 76 that no patent will be allowed for the corresponding invention in China (Article 76) if the above approval/license is not obtained prior to the first filing out of China for any invention made in China.
However, some questions remain, including
how long the official approval may be available (suggestions are made to be included in the Implementing Regulations as within 6 months);
how to define the venue where the invention is made (still vague and under discussion);
whether it could be a ground of invalidation against a patent (likely may be included in the Implementing Regulations)
The new law was proposed to be published after the approval by the Legislature around the end of this year. However so far as we know, it will be delayed likely till the end of next year.
Hi WilliamThanks so much.For everyone else – William is a partner at Panawell and a leading IP practitioner in China.
Yup, I agree with William.The current Patet Law has prescribed in its Article 20 that any invention made in China shall be filed first in China. but, in operation, for an invention made in China, we can file directly an PCT application.The current Patent Law (in English and Chinese) can be found here:http://ipsky.org/wiki/patent/patent-law
Hi Choicky – welcome, and thanks for your comments.