About file an overseas patent application скачать в хорошем качестве

About file an overseas patent application

A Chinese individual/ company can directly file an overseas patent application for his/its invention completed in China without filing a domestic application in advance, but the applicant needs to file a request for confidential examination with the CNIPA to acquire its permission for filing overseas patent application. Article 20 of the Patent Law provides that, if any entity or individual applies for a patent in a foreign country for an invention or utility model completed in China, it shall report in advance to the patent administrative department under the State Council for confidential examination. Article 8 of the Implementing Rules of the Patent Law stipulates that, an invention or utility model completed in China refers to that the substance of its technical solution is completed within Chinese territory. There are two situations of overseas application: (a) if the applicant intends to file an overseas application directly, the applicant shall submit the request for confidential examination in advance to CNIPA with a detailed description of its technical solution; (b) if the applicant intends to file a domestic application with CNIPA and then file an overseas application , the applicant shall request for confidential examination for the domestic application with CNIPA before filing the corresponding overseas application. In addition, if it is a PCT application that is filed with CNIPA, a request for confidential examination is deemed to have been made at the same time. Therefore, regardless of whether a domestic patent application has been filed or not, as long as the invention is completed in China, a request for confidential examination shall be filed before filing an overseas application, and overseas application may be filed upon permission of the confidential examination. It should be noted that, it doesn’t matter whether the applicant is a Chinese or a foreigner and whether the inventor is a Chinese or a foreigner. If an overseas application is filed for invention or utility model patent without passing confidential examination in China, no patent right will be granted for the invention when the applicant files the patent application in China. Therefore, we suggest that the applicant simultaneously file a domestic application in China and a confidential examination request. Then, within the 12-month priority period, an overseas application under the Paris Convention or a PCT international application claiming for priority of the domestic application could be filed, or a PCT international application could be directly filed with the CNIPA, saving the need of a separate request for confidential examination.