1

CHINA IPR NEWS

www.deqi-iplc.com

1.Establishment of Beijing Third Intermediate People's Court in August, 2013

In 2011, the Beijing First Intermediate People's Court and

the Second Intermediate People's Court concluded 60,000

cases, up 485% compared with the year of 1995 when the

Beijing Intermediate People's Court was divided into two

intermediate people's courts. In order to meet the challenge of

surgent adjudication work, the Beijing Third Intermediate

People's Court was established on August 6, 2013, and will be

officially opened on August 21, 2013.

Beijing First, Second & Third Intermediate People’s Courts

hear cases of first instance assigned by laws, and appealed and

protested cases from corresponding lower courts. From

August 21, 2013, their respective jurisdctions are as follows:

CHINA IPR NEWS

1. Establishment of Beijing Third Intermediate People's Court in August, 2013 1

2. Supreme People's Court Judgement Document Will Be Published Online in 2013 2

3. Several Provisions on Issuance of List of Dis-honest Persons Subject to Enforcement to Take Effect on October 1, 2013 2

PATENT COLUMN

1.Confidentiality Examination of Patent Appli-cation Intended to Be Filed Outside China 2

2. How to Determine Invention or Utility Model Developed in China For Chinese Confidentiality Examination 5

Q & A China 6

Scenery of China 6

·TOP·

Beijing First Intermediate People’s Court

Haidian District, Shijingshan District, Mentougou District, Changping District and Yanqing County

Beijing Second Intermediate People’s Court

Dongcheng District, Xicheng District, Fengtai District, Fang-shan District and DaxingDistrict

Beijing Third Intermediate People’s Court

Chaoyang District, Tongzhou Distric, Shunyi District, Huair-ou Distric, Pinggu District and Miyun County

Source:http://www.bj.xinhuanet.com/bjyw/2013-08/06/c_116832161.htm

2

Supreme Court judgment document posted on the Interim

Measures has been reviewed and approved and came into

effect in July, 2013. The first batch of judgments has been

published recently.

According to this approach, except as otherwise

provided by the law, all the judgments ,orders and

decisions made by the Supreme People's Court will

continue to be published on its official website

(www.court.gov.cn/zgcpwsw).

Before publishing judgment documents on the Internet,

it is necessary to perform technical processing on

individuals' private information as well as other contents

which are inappropriate to be disclosed. Where a party

considers that the case involves personal privacy or trade

secrets and requests for not publishing, the departments

handling the case shall review the reasons and decide the

case not to be published, if the reasons are found to be

justified and the case does not involve any public

interests.

Source:http://news.hbtv.com.cn/2013/0703/417434.shtml

Several Provisions on Issuance of List of Dishonest

Persons Subject to Enforcement were promulgated by the

Supreme People's Court, and shall come into force as of

October 1, 2013.

Supreme People's Court statistics show that among the

national court rulings from 2008 to 2012 in which the

debtor has property cases, more than 70% of the persons

subject to enforcement escaped, evaded and even

violently resisted the enforcement, less than 30%

performed automatically. These provisions aim to solve

the problem of "difficult enforcement” of judgment.

According to the provisions, people's courts at all levels

shall record the dishonest persons subject to enforcement

into the database of dishonest persons subject to

enforcement of the Supreme People's Court, and disclose

the list to public uniformly.

The provisions also state that people's courts at all levels

can publish the dishonest persons subject to enforcement

through newspapers, broadcast, television, Internet,

bulletin boards and other means according to actual

situations, and can periodically inform the public about

the situation of dishonest persons lists through press

conferences or other means.

The person subject to enforcement would be included

in the blacklist under one of the following circumstances

applies

1. Obstructing or resisting enforcement by means of

fabricating evidence, violence or threats, etc.;

2. Avoiding enforcement by false litigation, sham

arbitration or hiding and transferring property, etc.;

3. Violating the property reporting system;

4. Violating the high consumption restriction order;

5. The person subject to enforcement refuses to fulfill

or implement the settlement agreement without proper

reasons; or

6. Other circumstances where the person subject to

enforcement refuses to perform the obligations

established by effective legal documents while being

equipped with the ability to perform.

Source:http://news.sina.com.cn/o/2013-07-20/065927721301.shtml

1.Brief introduction

The Patent Law of the People's Republic of China that

goes into effect on October 1, 2009 (i.e., the third revision

of the Patent Law) puts forward a provision of

confidentiality examination for invention or utility model

developed in China while intended to be filed as a patent

PATENT COLUMN

1.Confidentiality Examination of Patent Appli-

cation Intended to Be Filed Outside China

By Nannan Lin

·TOP·

2.Supreme People's Court Judgement Document Will Be Published Online in 2013

3.Several Provisions on Issuance of List of Dishonest Persons Subject to Enforcement to Take Effect on October 1, 2013

3

application abroad. The invention or utility model

developed in China is admitted to be filed as a foreign

patent application only when it is determined upon

examination that the invention or utility model does not

need to be kept secret. When the provision is violated, a

corresponding patent application filed in China is not

patentable. Even if patented, the corresponding patent

right may be declared invalid for this reason. Specifically,

the invention or utility model developed in China refers to

those of which substantive content of the technical

solution were completed within the territory of China.

2.Three routes

The State Intellectual Property Office (SIPO) is

responsible for receiving a request for confidentiality

examination of patent application intended to be filed

outside China. Specifically, there are three routes to satisfy

the provision of confidentiality examination for filing a

patent application abroad.

①File a patent application abroad directly

②File a patent application abroad after a corresponding

patent application is filed to the SIPO

③File an international application, i.e., an international

patent application through the Patent Cooperation Treaty

(PCT)

For route ①, before applying for a patent application

outside China, the applicant shall submit a request for

confidentiality examination of patent application to be

filed abroad (hereinafter referred to as a request for

confidentiality examination) and the description of the

technical solution to the SIPO in paper form. The

applicant may also submit corresponding documents in

foreign languages for the examiner’s reference. The

description of the technical solution shall be consistent

with the contents of the patent application to be filed

abroad. If they are not identical, a corresponding Chinese

patent application may not be granted a patent in China.

For route ②, the applicant shall submit a request for

confidentiality examination at the same time when or after

a Chinese patent application is filed, surely before filing a

corresponding patent application abroad. The contents of

the corresponding patent application filed abroad shall be

identical with those in the Chinese patent application.

According to statistics, 60% of applicants prefer to submit

the Chinese patent application and the request for

confidentiality examination at the same time.

For route ③, the applicant shall be deemed to have

simultaneously filed a request for confidentiality

examination to the SIPO when it or he files the

international application designating the SIPO as the PCT

Receiving Office. That is, the applicant is not necessary to

submit an additional request for confidentiality

examination with route ③.

It should be pointed out that if an international

application is submitted by the applicant to another

Receiving Office (including the International Bureau)

other than the SIPO, the international application shall be

processed in accordance with route ①. In addition, acting

as the PCT Receiving Office of an international

application, the SIPO requires that at least one applicant

of the international application has a Chinese nationality

or has a residence in China. Under the requirement, if the

applicant is not entitled to file the international

application to the SIPO, the SIPO may not conduct the

examination for acceptance even if the international

application is submitted to the SIPO, but transmit the

application documents directly to the International

Bureau. In this case, it is not deemed that the applicant

has filed the request for confidentiality examination to the

SIPO.

In the above three routes, only Chinese is accepted by

the SIPO by use of routes ① and ②. As to route ③, the

SIPO is able to accept application documents in Chinese

or English. Therefore, route ③ may have linguistic

convenience to some foreign applicants. Moreover, route

① may have more cost savings than other two routes

since the request for confidentiality examination itself has

no official fees. In contrast, route ② requires to pay costs

associated with the Chinese patent application, while

route ③ may incur expenses relating to the international

application.

·TOP·

4

3.Examination situation

When the request for confidentiality examination is

received, the SIPO may give a conclusion according to

specific circumstance, and issue a notification of

confidentiality examination of patent application to be

filed abroad (hereinafter referred to as a notification of

confidentiality examination) to inform the applicant of the

conclusion. The conclusion may be to allow filing a patent

application abroad without keeping the corresponding

technical solution secret, to suspend filing a patent

application abroad due to national security or other vital

interests, to deem the request for confidentiality

examination not to have been made since the form of the

documents for the request does not comply with the

provisions, etc. When the conclusion in the notification of

confidentiality examination is to suspend filing a patent

application abroad, the SIPO may further issue a decision

on confidentiality examination of patent application to be

filed abroad, informing the applicant whether it is

required to keep the technical solution secret or not.

According to statistics, approximately 99.9% of the cases

having been examined by the SIPO have passed the

confidentiality examination and been permitted to be filed

as a foreign patent application.

If the applicant fails to receive the notification of

confidentiality examination within 4 months from the

filing date of the request, or the applicant fails to receive

the decision on confidentiality examination within 6

months from the filing date of the request when the

applicant is required to suspend filing the foreign patent

application, it or he is considered to have a permission to

file the foreign patent application. It should be noted that

4 months or 6 months is the upper time limit for

examination. It does not mean that every request for

confidentiality examination will take such a long time for

processing. In other words, the maximum time period

shall not exceed 4 months or 6 months respectively even

for the most complicated cases. According to statistics,

the average period from the submission of the request for

confidentiality examination to the issuance of an

examination conclusion for the first time by the SIPO is

approximately two weeks. In actual practice, by delivering

in person of the Chinese patent application and at the

same time raising the request for confidentiality

examination through route ②, the applicant may get the

first notification of confidentiality examination at the

same time when it or he gets a notification of acceptance

on the filing day of the Chinese patent application,

wherein most requests for confidentiality examination are

approved by Examiners for the first time they are

examined. As to route ③, the confidentiality examination

may generally be completed within a week.

4.Treatment recommendation

In summary, Applicants can determine whether to file a

request for confidentiality examination according to their

own situations, select a route to file the request for

confidentiality examination and provide documents

corresponding to the route with the SIPO. When

determining whether a technical solution is developed in

China, information relating to the applicant or inventor

(such as nationality, recent work place and place of

residence, etc.) may be used for reference. Also, factors

such as language, related costs, examination time, and

earliest filing date, etc. may be taken into account

comprehensively when selecting a route for confidentiality

examination. If a foreign applicant would like to use route

③ for his technical solution developed in China, that is,

to submit an international application with the SIPO as

the PCT Receiving Office, the international application

may probably be transmitted by the SIPO to the

International Bureau for acceptance on a ground that the

applicant is not a Chinese national or resident. Then, the

foreign applicant may not be regarded as having raised the

request for confidentiality examination to the SIPO,

which is better to be aware of beforehand.

·TOP·

5

As to the confidentiality examination mentioned in

Article 20 of the Patent Law, Rule 8 of the Implementing

Regulations of the Patent Law of the People's Republic of

China provides a detailed provision, which specifically states that “the invention or utility model developed in

China as mentioned in Article 20 of the Patent Law refers

to an invention or utility model of which the substantive

contents of the technical solution were made within the

territory of China”. Normally, the territory of China refers to the territory within the China customs frontier,

excluding the regions of Hong Kong, Macao and Taiwan.

Take an invention for instance, detailed explanations on

how to determine “the substantive contents of the

technical solution” will be given below.

Firstly, the substantive contents of the technical

solution may be determined according to inventors

named in a patent application. Concerning the concept of

"inventor", Rule 13 of the Implementing Regulations of

the Patent Law states that “‘Inventor’ or ‘creator’ referred

to in the Patent Law means any person who makes creative contributions to the substantive features of an

invention-creation. Any person who, during the course of

accomplishing the invention-creation, is responsible only

for organizational work, or who only offers facilities for

making use of material and technical means, or who only takes part in other auxiliary functions, shall not be

considered as inventor or creator.”

It should be noted that confidentiality examination shall

be requested for an invention completed by its inventor

within China regardless whether the inventor is a Chinese or a foreigner. Of course, it should pay more attention

regarding confidentiality examination on an invention

where one or more of its inventors are Chinese nationals

or residents.

In an example, it is assumed that a multinational

corporation has a parent company abroad, and sets up an R&D center in China. A technical solution developed by

the R&D center has a foreign project manager (or has a

project manager living abroad). If the project manager is

merely responsible for organizational work, and does not

participate in substantial work of research and development, the project manager does not play a

decisive role in confidentiality examination determination.

In other words, we can not lightly draw to a conclusion

that the technical solution is completed in a foreign

country and does not subject to confidentiality examination in China just because it has a foreign project

manager.

Secondly, contents of claims may be taken into

consideration. The “substantive contents” in paragraph 1

of Rule 8 of the Implementing Regulations of the Patent

Law refer to those created by an inventor and not disclosed in the prior art, which may correspond to

contents described in characterizing portions of the

claims (especially an independent claim). For example, as

to an invention accomplished under the cooperation of

research staffs from multiple countries, distinguishing features of an independent claim are relied on to

determine whether the invention is done in China or not.

As a general principle, if it can be determined definitely

that a technical solution is not an "invention or utility

model developed in China", a request for confidentiality examination is not necessary. Otherwise, the request for

confidentiality examination is proposed. In particular,

when there is an ambiguity on determining whether the

invention or utility model is developed in China, it is

recommended to request the confidentiality examination.

The reason is stated in detail hereinafter.

Complying with the provision of confidentiality

examination may simply add some extra operations on an

application process, while ignoring the provision of

confidentiality examination may have serious

consequences. Generally, a vast majority of inventions or utility models are not related to national security or other

vital interests, and are not required to be kept secret. As

long as a request for confidentiality examination is filed to

the State Intellectual Property Office (SIPO), an

allowance for filing a patent application abroad may be obtained easily and quickly. However, in the case that a

confidentiality examination is probably necessary for an

invention or utility model while skipped during the

·TOP·

2.How to Determine Invention or Utility Model Developed in China For Chinese Confidentiality Examination

By Nannan Lin

6

application process, the patent right obtained in China

may be unstable.

If someone raises a request for invalidation directed to a

Chinese patent based on a ground that confidentiality

examination necessary for the patent has never been

requested, the right of the Chinese patent is very likely to

be declared as invalid if the confidentiality examination in

China is really needed for the patent. In particular, when

there is a conflict of interest between competitors, a

competitor may use all means to prove that an invention

or utility model of its opponent is done in China when it

or he finds that a confidentiality examination requirement

has not been met, in order to invalidate the patent right

for the invention or utility model obtained in China. By

requesting confidentiality examination beforehand, we can

avoid the aforesaid ambiguity in order to eliminate the

potential threat to the stability of the patent right.

The submission time of division application in China is

as follows:

1.After the initial application has been filed and there is

no Notification to Grant Patent Right or decision of rejection

received, the applicant shall file a division application. If

the initial application has been withdrawn, or is deemed to

have been withdrawn and the right has not been restored,

no division application shall be filed in general.

2.The applicant shall file a divisional application no later

than the expiration of two months (i.e. the time limit for

going through the formalities and registration) from the

date of receiving the Notification to Grant Patent Right to the

initial application issued by Patent Office.

3.With regard to the initial application to which the

examiner has issued the decision of rejection, the applicant

may file a divisional application within three months from

the date that the applicant receives the decision of

rejection regardless of whether the applicant requests for

reexamination or not.

4.The applicant, after requesting for reexamination or

during the initiation of the administrative litigation against

the reexamination decision, may also file a divisional

application.

(end)

Q & A China

Could you explain about the submission time of

division application in China?

----From USA

Copyright © 2013 Deqi Intellectual

Property Law Corporation . All Rights

Reserved.

Contact us:

Tel: + 86 10 82339088

Fax: + 86 10 82331881

E-mail: mail@deqi-iplc.com

Address: 7/F, Xueyuan Internaional Tower, No. 1

Zhichuan Road, Haidian District, Beijing, P.R.China

Postcode: 100083

Website: www.deqi-iplc.com

Scenery of China

Zhangjiajie National Forest Park

It is located in North-Western part of Hunan

province. The park is known for its unique

landscape with lush forests dominated by quartzite

sandstone pillars.

(Photo taken by Yanling Zhou on June.4th, 2012)

·TOP·