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Regulations on sharing intellectual property abroad




Wen Dapeng and Li Rongxin of China Patent Agent talk about some Chinese regulations governing the foreign transmission of intellectual property

Multinational companies and foreign universities wanting to invest in R&D projects in China and seeking intellectual property protection for their products must abide by "confidentiality examination" provisions under the Chinese Patent Law and the Regulations on Technology Import and Export Administration.

Confidentiality examination

The confidentiality examination system was established by the third amendment to the Chinese Patent Law. It requires any individual or entity wanting to file an application for a patent abroad for an invention or utility model developed in China to request a confidentiality examination from the State Intellectual Property Office (SIPO). If the invention or utility model divulges an important secret of the State, the applicant shall be subject to disciplinary sanction or prosecuted for its/his criminal liabilities.

The Implementing Regulations of the Chinese Patent Law stipulate three scenarios in which an interested party requests the SIPO to conduct a confidentiality examination: (1) where an interested party files an application for a patent directly in a foreign country, rather than in China, it or he shall file a request for confidentiality examination in advance with the SIPO before filing the application for patent in a foreign country, and describe the technical solution of the invention or utility model in detail in Chinese, wherein the explanation of the technical solution shall be identical with the content of the patent application to be filed in a foreign country; (2) where after having filed an application for a patent in China, the party concerned intends to file a patent application in a foreign country, it or he shall file the request for a confidentiality examination with the SIPO at the same time of or after filing of the application in China; and (3) where the party concerned files a an international patent application under the Patent Cooperation Treaty with the SIPO as the receiving office, it or he shall be deemed to have simultaneously filed the request for a confidentiality examination.

Where the SIPO deems that the invention or utility model may relate to the security or vital interest of the state and has to be kept secret, it shall promptly issue a notification of confidentiality examination to the applicant; if the applicant fails to receive the notification of confidentiality examination within four months from the date of filing the request, it/he may file an application for the patent in a foreign country. After issuing the notification, the SIPO should make a decision on whether the invention or utility model is required to be kept secret and notify the applicant accordingly. If the applicant fails to receive such a decision with six months from the date of filing its or his request, it/he may file an application for the patent in a foreign country.

Technology export

The Chinese Patent Law also stipulates that where a Chinese entity or individual intends to assign the right of patent application, or the patent right, to a foreigner, a foreign enterprise or any other foreign organisation, it/he shall go through the formalities for registration of the technology export contract with the competent foreign trade department under the provinces, autonomous regions and municipalities so as to obtain a registration certificate. Although most technologies can be freely imported and exported, the party concerned should check the Catalogue of Technologies Prohibited or Restricted by China from Import and Export published by the Ministry of Commerce.

Wen Dapeng
  Wen Dapeng received his BS in Precision Instruments and Mechanics from Tsinghua University in 1991, and trained at patent law firms in Germany and the U.S. in 2002 and 2006, respectively. He is a member of the Chinese Group of AIPPI, a member of LES China and a member of All-China Patent Attorneys Association.

Li Rongxin
  Li Rongxin obtained his LLB and LLM in civil and commercial law from Jilin University in 2004 and 2007 respectively. He received his BS in Computer Science and Technology from Changchun University of Science and Technology in 2012. He participated in the Research Project on the Amendment to the Implementing Regulations of the Chinese Patent Law in 2007 and is a member of All-China Patent Attorneys Association. He mainly focuses on contentious issues of intellectual property protection


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