Patent Law revisions approved

February 09, 2009 | BY

clpstaff &clp articles

No more China first filing, but closer scrutiny of foreign applications

China has removed the local first-filing rule from its Patent Law, but added new provisions to require scrutiny of all patents which are initially filed overseas.

The Standing Committee of the National People's Congress approved revisions to the Patent Law on December 27 2008; they take effect on October 1 2009.

The previous version of the Law said that Chinese entities (there had been considerable debate as to the meaning of this phrase) had to file patent applications in China before filing overseas. The removal of this requirement has been welcomed by most observers.

However, the revised law now states in Article 20 that anyone wishing to file a foreign patent application for an invention which was “completed in China” must report this to the State Intellectual Property Office which will conduct a confidentiality examination.

There has long been confusion over the exact meaning of the phrase “completed in China”. In the US, where similar wording is used, it is generally accepted that a foreign filing licence is required even if the invention is only partially made in the country.

Although the first-filing requirement has now officially been removed, the revised Law includes a penalty clause stating that an application may later be rejected if it did not comply with
Article 20.

“You may not see consequences until a few years down the line – the onus of proof will likely be on the patent holder,” warns Annie Tsoi, IP partner of Deacons in Hong Kong.

For more on the revised Patent Law, see the February 2009 analysis article and IP Business Law Bulletin. A full translation can be found here.

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