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The patent foreign filing license requirement in a cross-border setting- the perspective of China-US
Nancy (Xiaowen) Song
Partner U.S. Patent Bar Passed (July 2018) Group Leader of Electrical Engineering Department(DivisionⅡ) Chinese Patent Attorney
Welcome to Linda Liu & Partners on the air. This is Nancy Song.
Complying with the patent "foreign filing license" requirement in a cross-border setting: the perspective of China-US
For companies that are operating internationally, it is not uncommon to have R&D facilities in a number of countries, where engineers cooperate with each other across the border to innovate. Meanwhile, many jurisdictions have its own laws on the approval before one can file a patent application in other countries for the home innovations. As the laws may conflict from country to country, it becomes daunting for many who are facing co-inventors from more than one country.
We have been asked many times by in-house counsels and foreign attorneys on how to comply with the PRC Patent Law and at the same time the foreign laws.
In a typical case, an inventor in the U.S. works together with her colleague in China mainland on a new invention, which means the invention is made in U.S. and also in China. While U.S. has the law on the patent application for an invention made in the U.S. needs to be filed in the U.S. first, China has a similar law. So, are we in a dilemma here?
Let's look a step further into the details of the practice.
PRC Patent Law requires "where an entity or individual intends to file an application in a foreign country for patenting an invention or utility model accomplished in China, it or he shall report in advance to the patent administrative department of the State Council for confidentiality review" (Article 20, PRC Patent Law, emphasis added). Therefore, the patent application on the invention made in China needs to be filed firstly in China unless we have got approval from the PRC confidentiality review (also referred to as "confidentiality examination").
You may naturally ask: "How long does the PRC review takes?" In our practice, for a separately filed confidentiality review request as in the current case, the review usually takes no less than two weeks. And of course, you need to have a Chinese-language document ready for the confidentiality review.
Now let's look at the U.S. side. While getting a foreign filing license from the USPTO may take weeks in an ordinary case, it fortunately provides some more flexible option: getting an expedited foreign filing license. In practice, we have seen the foreign filing license granted by USPTO in two or three days.
Of course, for the first patent application in a potential family, we always prefer an earlier filing date as much as we can reasonably achieve - no exceptions for cross-border inventions. With the above introduction, an advisable solution is to apply for the U.S. foreign filing license first, possibly in the expedited option, and then file the first patent application in China. This is the answer to the above "dilemma".
Here is a heads-up for the further procedure. CNIPA does not accept English language filings, unless it is a PCT application filed with CNIPA as the Receiving Office. Since a high-quality translation from English to Chinese is still time consuming to prepare, for the sake of an earlier priority date, many choose to file an English-language PCT application before CNIPA for such China-US cross border innovations after receiving the U.S. foreign filing license.
Feel free to contact me if you have any questions. As a leading IP law firm in China, we are always glad to help. See you next time.
