Understanding China’s Foreign Filing License Requirement
When an invention is developed in China, Chinese Patent Law requires applicants to obtain a foreign filing license before filing outside China.
Even if an applicant intends to first file outside China, a foreign filing license may still be required. Specifically, if the invention or utility model was developed in China, the applicant must first request a confidential examination from the China National Intellectual Property Administration (CNIPA). Afterward, the applicant must obtain a foreign filing license.
Challenges in Determining the Invention’s Development Location
Applicants have struggled, however, with the question on how to determine where an invention was developed. For instance, an invention could have been devised by more than one inventor. It’s possible that not all the inventors are located in the same country. It’s possible it could have been developed partially in China and partially in another country. It is becoming common for inventions to be formulated remotely by inventors located in different countries. In such instances, where the invention was first created is becoming increasingly difficult to answer.
CNIPA Criteria for Determining Development in China
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.
Substantial Similarity Between Claims Is Required
First, parity between claims matters. Prosecution disclaimer carries over only when claim language is substantially similar. Without that similarity, importing limitations from an earlier patent is improper.
Disclaimer Requires Clear and Unmistakable Statements
Second, disclaimer must be clear and unmistakable. Mere silence does not create disclaimer.
Failure to dispute an examiner’s statement is not enough. Therefore, applicants do not need to respond to every reason for allowance.
IPR Statements Must Meet the Same High Standard
Third, the court addressed disclaimer during inter partes review. Statements made during IPR can support disclaimer. However, they must meet the same clear and unmistakable standard. Vague or broad statements generally will not limit claim scope.
Practical Guidance for Patent Prosecutors
This case offers practical guidance for patent professionals. First, differentiate claim language across related patents when appropriate. Doing so may reduce the risk of unintended limitations. Second, draft prosecution and IPR statements carefully. Avoid broad or ambiguous language that could narrow claim scope.
Finally, remember that silence is not automatic acquiescence. In many cases, there may be no need to contest every examiner comment.
Why the Maquet Decision Matters
Ultimately, Maquet helps preserve control over claim scope. It also limits the automatic spread of disclaimer across patent families.
As a result, patent owners have clearer boundaries when litigating related patents.
Both the address of the patentee and the nationality of the inventors would be considered. 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.
Role of Inventor Nationality and Residency
Similarly, the CNIPA held that inventor nationality may also be relevant. Where inventors are Chinese citizens with no permanent residence outside China, the invention is more likely to have been developed in China.
However, contrary evidence may be provided. For example, inventors may show they spent significant time outside China conducting research and development.
Open Questions and Future Considerations
Nevertheless, questions remain about how these factors should be weighted. For instance, a patentee may have R&D resources both in China and abroad. Likewise, inventors may have different nationalities or residencies. In addition, at least one inventor may have contributed while outside China.
Even so, this recent decision is a positive step forward. It provides insight into which factors the CNIPA will likely consider when determining whether an invention was developed in China.
Lucia Minnucci, LL.M
Lucia Minnucci is a Law Clerk at Fish IP™. Lucia received her first degree in law from the University of Bologna, in Bologna, Italy. After obtaining her law degree, Lucia received an LL.M degree from the University of Pennsylvania Carey Law School, with a concentration in Intellectual Property and Technology Law.