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Cross-Border Patent Assignment--How Can Foreigners Obtain Patent Assignments from Chinese Patentees?
Peter (Baoyu) ZHANG Partner Patent Attorney
Hi everyone. Welcome to Linda Liu on air. This is Peter Zhang.
Today, I‘d like to discuss how to fulfill a cross-border patent assignment in compliance with Chinese law, specifically in the scenario of patent assignment from Chinese patentees (applicants) to foreigners.
We should be aware that the patent transfer from a Chinese patentee (applicant) to a foreigner involves technology export, so before going through the transfer proceeding with CNIPA, the patentee (applicant) must make the recordal of the technology export contract before the Commerce Bureau where the Chinese patentee (applicant) is located.
Therefore, in order for foreigners to fulfill the transfer of Chinese patents, the following two steps are required.
Step I: Before the Commerce Bureau where the Chinese patentee (applicant) is located, the patentee should acquire the recordal of the technology export contract which can be drafted with the help of an attorney.
Step II: Before CNIPA, the patentee (applicant) changes the ownership of the Chinese patents (applications) by submitting the necessary documents including the certificate of recordal of the technology export contract.
In Step I, quite a few sub-steps are involved:
Sub-step 1: draft a technology export contract between assignor and assignee;
Sub-step 2: register an account in the name of the assignor on the online platform of the Ministry of Commerce of China. Information such as the assignor‘s unified social credit code, full name, ID information of the legal representative, etc. is necessary.
Sub-step 3: besides the technology export contract, the following documents are also required:
-an application form for technology export contract;
-a datasheet of the technology export contract;
-a project approval document that can be the board resolution or the resolution of the assignor’s general manager's office meeting;
-the business license of the assignor; and
-the registration form for foreign trade operator of the assignor (i.e. the qualification for import and export).
After completing Step I (we can see that in Step I, there is a lot of work for the assignor), the assignee can initiate the transfer before the CNIPA (Step II).
With regards to Step II, in order to fulfill the change of the patent owner/applicant before CNIPA, besides the certificate of recordal of the technology export contract, the foreign assignee should prepare a power of attorney and an assignment statement (contract) signed by the assignor and the assignee. The assignee can use the above-mentioned technology export contract as the statement, and the scanned copy is sufficient. As an alternative option that is often adopted, the assignee can choose to file a simpler statement (contract) for this transfer proceeding in Step II.
