When an invention is developed in China, Chinese Patent Law requires an applicant to obtain a foreign filing license before filing a patent application outside of the country. Even where an applicant intends to first file the application outside of China, if the invention or utility model is developed in China, the applicant must first request a confidential examination from the China National Intellectual Property Administration (CNIPA) and obtain a foreign filing license.
Applicants have struggled, however, with the question on how to determine where an invention was developed. First of all, an invention could have been devised by more than one inventor, where not all the inventors are located in the same country; or it could have been developed partially in China and partially in another country. As it is becoming common for inventions to be formulated remotely by inventors located in different countries, the question of where the invention was first created is becoming increasingly difficult to answer.
A recent decision of the CNIPA, on May 9, 2022, shed some light on the matter. With this decision the CNIPA provided two criteria to determine whether an invention is developed in China: the address of the patentee and the nationality of the inventors. The address of the patentee is relevant because, where there is evidence that the patentee’s Chinese location has resources and capacity for research and development, and if there is no evidence of such resources outside of China, it is likely that the invention was developed in China.
Likewise, the CNIPA held that where the inventors are Chinese citizens with no permanent residence outside of China, it is more likely that the invention was developed in China. However, contrary evidence can be provided showing that the inventors spent a considerable amount of time, sufficient for research and development of the invention, outside of the country.
Questions remain as to how to weight these elements when, for example, a patentee has R&D resources and facilities both in China and outside of the country, or when the inventors are of different nationalities, have different residencies and at least one has contributed to the invention while outside of China. Nonetheless, this recent decision is a good step forward, providing insight on which elements the CNIPA is likely to give weight to and consider relevant to determine whether an invention has been developed in China.