Written by Haoyu ZHOU (Elliot)

 

It is commonly known that any inventions made (or partially made) in China must first obtain a foreign filing license from the China National Intellectual Property Administration (CNIPA) BEFORE it can be filed as a patent application in countries/regions outside China. Failing to do so will violet Article 20.1 of the Chinese Patent Law and will result in an invalidation of the corresponding Chinese patent.

 

But, in practice, there were almost no successful cases which relied on Article 20.1 of the patent law to invalidate a Chinese patent, in part because it was difficult for the petitioner to prove WHERE the invention was made, and in another part because there were not that many foreign patent filings in the past.

 

Interestingly, the Re-examination Board of the CNIPA recently published a first Patent Invalidation Decision (No. 55586) where the patent was held invalid in its entirety due to “a failure to obtain the foreign filing license”. This Decision was published on May 9 of 2022, and it informatively showed the attitude of the Re-examination Board of the CNIPA on how to prove WHERE the invention was made.

 

(I)           The address of the patentee.

 

The Re-examination Board held that, according to the bibliographic information of the patent and the prospectus published by the patentee, it can be understood that the R&D of this invention was likely done in China. Since there is no counter-evidence showing that the patentee has any R&D capacity in countries outside of China, it is likely that the invention was made in China and;

 

(II)          The nationality of inventors.

 

(i)     There are 4 inventors for this Chinese patents, and three of them are Chinese citizens with no permanent residence in any other countries. Some of the inventors have never travelled to other countries during their employment in the patentee’s company. So, the Re-examination Board held that, in the absence of any contrary evidence, it is likely that the invention was made in China, at least partly and;

 

(ii)    The patentee counter-argued that the invention was primarily done by one of the Chinese inventors during his stay in the U.S. back in 2016. However, the passport record of said inventor showed that he has only stayed in the U.S. for 10 days between November 13 and November 24, 2016 prior to the filing date of the U.S. provisional application. The Re-examination Board held that it does not make much sense for a complete technical conception and solution to be done within a period of just 10 days, let alone the contributions made by other inventors.

 

In view of the above, it is apparent that the Re-examination Board consider the address of the patentee and the nationalities of inventors are two important criteria to show where the invention was made. Thus, if a petitioner wants to rely on Article 20.1 to invalidate a Chinese patent, the petitioner should focus on these two criteria to prepare the draft petition. If the patentee can’t provide sufficient counter-evidence to rebut any of the two criteria above, the decision will likely be more in favor of the petitioner. However, if the patentee can show that (i) they have R&D capacity outside China, and/or (ii) the Chinese inventors have stayed for a sufficiently long period outside China to complete the invention, then the Re-examination Board would probably find it difficult to support the petitioner.

 

In any event, as more and more Chinese entities and inventors are filing their patent applications outside China, obtaining a foreign filing license from the CNIPA would be necessary and unprecedentedly important. Regarding how to obtain the foreign filing license from the CNIPA, I wrote an article in 2021. Please refer to my article at

http://foundin.cn/en/bbs/board.php?bo_table=ip_trends_en&wr_id=24&page=3 for details.

 

If you have any questions in relation to this topic or any other topics about Chinese Patent Law and Practice, please do not hesitate to contact Mr. Haoyu  ZHOU (Elliot) at patent@foundin.cn.