"Confidential review", as its name implies, means that the review should be conducted "in secret" and cannot be disclosed to "outsiders". In China, "confidentiality review" is a necessary procedure for every patent application that "wants to apply overseas". Article 20 of the Patent Law clearly stipulates: "Any unit or individual who applies to a foreign country for a patent for invention or utility model completed in China shall report to the patent administration department of the State Council in advance for confidential examination. The procedures and time limit for confidentiality review shall be implemented in accordance with the provisions of the State Council ".
So why is confidentiality review essential? What is the purpose of confidentiality review?
For the sake of national security, every country has basically formulated a corresponding confidentiality review system. Before filing a patent application in a foreign country, the applicant must file a request for confidentiality review in his own country or meet the corresponding conditions before filing an application in a foreign country. The confidential examination procedure of patent application is the examination procedure that the applicant needs to carry out in accordance with the relevant provisions when he intends to file a patent application abroad for inventions and creations completed in his own country. Article 4 of the Patent Law clearly stipulates that "where an invention-creation for which a patent is applied involves national security or vital interests and needs to be kept confidential, it shall be handled in accordance with the relevant provisions of the state". Paragraph 1 of Article 20 of the Patent Law stipulates that any unit or individual who applies to a foreign country for a patent for invention or utility model completed in China shall file a confidentiality review with the Patent Office in advance. Submitting a request for confidentiality review actually requires the Patent Office to verify whether the invention-creation to be applied for abroad involves national security or major interests. If it is involved, the Patent Office will issue a confidentiality review notice to the applicant, informing him that the relevant patent application will be transferred to the confidentiality review mode, or it needs to be submitted through the confidentiality review mode, and it is not allowed to apply directly abroad; If it does not involve national security or vital interests, the Patent Office will also inform the applicant that it can apply abroad, or there is no conclusion that there is no matter that needs confidential review; If the applicant fails to receive the notice of confidentiality review within 4 months from the date of submission of his request, he may apply for a patent for invention or utility model abroad, or submit an international patent application to the relevant foreign institutions. Bian Xiao specially reminded that the design does not need to go through confidentiality review ~
Knowing the function of confidentiality review can help us understand the original intention of formulating confidentiality review policy in China.
Then there are two key points to consider when judging whether it is necessary to conduct confidentiality review:
1) What is "involving national security or vital interests"
Generally speaking, inventions involving national defense interests mainly refer to inventions specially used for national defense or of great value to national defense; Inventions and creations involving major interests other than national security or national defense interests refer to inventions and creations involving national defense interests, which will affect national defense capabilities, damage national political and economic interests or weaken national economic, scientific and technological strength after publicity. Can you be more specific? Sorry, the specific confidentiality standards shall be implemented in accordance with relevant state regulations. Of course, the relevant regulations of this country cannot be made public, which is why they need to be reviewed by authoritative departments before they can be determined. Of course, the applicant can also take the initiative to submit his own application for confidentiality review, but whether it belongs to the confidentiality application stipulated by the state still needs to be confirmed after examination by the authorities.
2) How to understand "completed in China"
The detailed rules for the implementation of the Patent Law stipulate that "an invention or utility model completed in China is an invention or utility model whose substantive technical scheme is completed in China". How to interpret the "substantive content of substantive technical scheme" becomes the key.
At this point, we can start from the following angles:
First, look at whether the inventor's research and development work is completed in China;
Secondly, it depends on the content of the inventor's creative labor contribution recorded in the characteristic part of the independent claim. If the inventor's related work is completed in China, it shall be deemed to be completed in China; If a work is completed overseas, it cannot be regarded as being completed at home, regardless of the inventor whose contribution is recorded in the manual;
Thirdly, if the exclusive right features in the claims reflect the work of several inventors, and some inventors have completed their work in China and some have completed their work overseas, it is necessary to further judge whose contribution is more important.
According to the above rules, we can basically make a preliminary determination and judgment on whether the invention and creation need to be examined in China.
With China's economic development, market opening and increasing internationalization, more and more enterprises have "foreign-related" factors, such as foreign employees in development teams and overseas teams and R&D departments in joint ventures. In addition to China, other countries also have requirements for confidential examination of patent applications involving the national defense and security interests of that country. Then, many China applicants raised the question of how to conduct confidential examination on "foreign-related" inventions.
Bian Xiao believes that if R&D works are completed in China, even if the inventor has foreigners, it can be considered as "completed in China"; If the R&D work is completed overseas, even if the inventor is from China, it can be considered as "completed in China"; If the R&D work is completed in China and overseas at the same time, to be on the safe side, it is best to formulate the strategy of confidentiality review before application, and conduct confidentiality review in China and overseas countries respectively to ensure that unnecessary risks will not be brought during the application process or after authorization in the future.
Where does the risk come from? According to the Patent Law and its detailed rules for implementation, the patent right will never be granted to China, which can be used as an invalid reason and may even violate other laws and regulations of China. In fact, most patent applications will not involve the vital interests of the country. In order to avoid this procedure, taking unnecessary legal risks may not be worth the candle.
Of course, due to the complexity of the actual situation and the difference of the applicant's R&D and application strategy, there will be various situations in reality, and the applicant needs to formulate and implement the strategy of confidentiality review request in advance. The result of confidentiality review is related to the stability of patent application right or patent right, which needs to be carefully verified by the applicant before submitting the application. Bian Xiao hopes that today's sharing will help applicants get more information and help them make accurate judgments.
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Source: China National Intellectual Property Administration website, patent law, detailed rules for the implementation of patent law, detailed explanation of China patent law, etc.