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Linda Liu & Partners

 
Since October 1, 2009 when the new Chinese Patent Law entered into force, wide attention has been attached to the secrecy examination of patent applications to be filed abroad and disclosure of the sources of genetic resources. This writer would like to present a brief analysis of the above two problems based on half a year’s experiences our firm has accumulated since the new Implementing Regulations of the Chinese Patent Law and the SIPO’s Guidelines of Patent Examination took effect.

I. Secrecy Examination

1. Applications subject to secrecy examination

According to Article 20 of the Chinese Patent Law and Rule 8 of the Implementing Regulations of the Chinese Patent Law, a request for secrecy examination should be made if an application satisfies two conditions as below:

(1) Its technical solution is substantively developed in China;

(2) A patent is intended to be applied for abroad.

Although there has been no specific stipulation on whether a patent application for an invention-creation developed in Hong Kong, Macao or Taiwan must go through a secrecy examination before it is to be filed abroad, it is suggested that the applicant submit a request for a secrecy examination if his invention-creation is developed in Hong Kong, Macao or Taiwan, especially if it is developed in the former regions.

2. Ways to request secrecy examination

The three ways to request secrecy examination provided for in Rule 8 each have both advantages and disadvantages and it is open to be selected by the applicant depending on his actual needs. The table below compares the three ways.
 

 

Requesting ways	Applicable situations	Documents	Examination period	Advantages	Disadvantages
1. Independent request (Submit a request for secrecy examination directly)	A person intends to file a patent application directly in a foreign country or to apply for a patent first in a foreign country.	① a written request for secrecy examination ② detailed explanations of the technical solution in Chinese ③ a power of attorney if an agent is entrusted	4-6 months, as provided for by law, are needed for the requester to receive an examination result; In practice, the requester receives a result about one month after the request is submitted.	① no independent application is needed to file with the SIPO； ② without official fees	① Detailed explanations of the technical solution are necessary; ② longer examination period in comparison with the second way
2. Correlated request (Submit a request for secrecy examination after applying for a patent in China)	A person has filed a patent application in China and wants to file the patent application in a foreign country, or a person intends to apply for a patent first in China and then in a foreign country.	a written request for secrecy examination	4-6 months, as provided for by law, are needed; In practice, ① if the request is submitted together with the patent application, the applicant will receive an examination result simultaneously with the Notification of Acceptance for the patent application, that is, a result arrives in about one week and maybe on the day the patent application is filed in case of emergency; ② if the request is submitted after the patent application, it takes about one month.	Compared to the first way, ① simple formalities ② less time consuming ③ a priority right may still be claimed for a subsequent foreign application.	A complete set of patent application documents must be provided.
3. Consequent request (Apply for an international application in China)	A person intends to apply for a patent in several countries at the same time.	none	1-3 months, as provided for by law, are needed; In practice, ① the SIPO will issue a PCT/ISA/202 Form, informing the applicant of having forwarded the IB a search copy if the international application is determined not to be kept secret, about 20 days after the application is filed; ② if the international application is determined to be kept secret, the SIPO will issue a PCT/RO/147 Form, notifying the application of termination of treating the application as an international one, within three months from the filing date.	① simple formalities ② getting several patents ③ the application may be written in English	higher costs

The SIPO does not require that detailed explanations of the technical solution be written in a particular form but requires that they be complete to such an extent to reveal every detail of the invention-creation.

Despite the three ways available, a person sometimes still finds it hard to select a suitable way. As an example, here is a technique jointly developed by sino-foreign efforts, for which a patent is to be applied for first in a foreign country. At the moment, the applicant has a problem because the relevant product will be on the market or the technique will be published in a few days while a secrecy examination, if requested in the first way, will take about one month. To solve the problem, the applicant can first file a patent application in China without paying an application fee while submitting a request for secrecy examination. Consequently, the applicant will get a result of the secrecy examination as well as the result that the application is deemed to have been withdrawn.

The above method ensures quick acquirement of a secrecy examination result without making the application public. However, the applicant has to prepare a complete set of application documents. Thus, it is not recommended unless for emergencies.

II. Disclosure of Information about Genetic Resources

As stipulated in Article 26.1, genetic resources referred to in the Chinese Patent Law means a material of human being, animal, plant and microbial origin containing functional units of heredity and having actual or potential value.

If a person applies for a patent for an invention-creation accomplished by depending on genetic resources, the applicant must disclose the source of the genetic resources. To fulfill the disclosure requirement, the applicant must:

(1) Declare in the Request for Getting a Patent that the accomplishment of the invention-creation depends on genetic resources.

(2) Fill a Registration Form of Disclosure of Source of Genetic Resources, indicating the title of the genetic resources, access to them, and direct and original sources thereof.

If the original source of the genetic resources is unknown to the applicant, he must state reasons, and furnish a certificate when necessary. For instance, the applicant could acquire the genetic resources from an organization (e.g. a depositary authority), which has no record of where the genetic resources have originally come from. In this case, the applicant may state, in the above registration form, the reason for his failure to disclose the original source as: the depository authority cannot afford the original source of the genetic resources, while submitting a certificate issued by the authority.
In general, the above registration form should be submitted at the time the application is filed. Regarding an international application, the form should be submitted as the applicant goes through formalities of entry into the Chinese national phase. If the Examiner thinks the documents are ineligible, he will issue a Notification to Make Correction, providing the applicant with an opportunity to correct. In the case that the applicant neither makes the declaration nor fills the registration form when he files the application, the Examiner of the preliminary examination department usually cannot find the problem but leaves it to the Examiner of the substantive department, who will issue a notification to require the applicant to submit the form. Admittedly, the Examiner of the preliminary examination department will likely find the problem and issue a Notification to Make Correction when it is considerably evident that the invention-creation is accomplished depending on genetic resources.
 

（2010）