Carmen Jiamin Su | June 28 2021

What is the confidentiality examination?

Article 19.1 of Chinese Patent Law stipulates that in situations where an entity or individual intends to file a patent application abroad, for an invention or utility model developed in China, they shall file it in advance with the CNIPA for a confidentiality examination.

How do you file a request for a confidentiality examination?

Option 1: File a patent application in China

A confidentiality examination can be requested online simultaneously or after filing the patent application. Because the patent application document already contains detailed information regarding the applicant(s) and inventor(s), there is no need to provide additional information or documents when requesting a confidentiality examination. 

Option 2: File a patent application abroad

If a patent application is filed abroad for an invention of Chinese origin, the confidentiality examination must be requested with paper documents. The names and addresses of the applicant(s) and inventor(s) in Chinese are needed, in addition to a Chinese description of the technical solution. Such description should include the title, contents, and technical field of the invention, as well as background art, figure description, and the best mode for carrying out the invention. The description must also be consistent in content with the patent application filed abroad. The applicant may submit the corresponding documents in foreign languages as references. Submitted drawings should have been created by drafting instruments such as computers and remain uncolored. The original Power of Attorney signed by the applicant(s) is also required in the request unless there is already a General Power of Attorney recorded in the CNIPA. It is not necessary to include Chinese translations of the claims, abstract, and abstract figures.

Option 3: File an international patent application with the CNIPA

Filing an international patent application in the CNIPA automatically requests a confidentiality examination. However, to file an international patent application with the CNIPA, at least one applicant must be a Chinese citizen or have a resident or business address in China.

How long does it take to receive the Notification of confidentiality examination?

1.If the patent application is filed in China and a confidentiality examination is requested at the same time, the Notification will be issued along with an Office Filing Receipt within 1 to 15 days from the filing date.
2.If the patent application is filed in China, but a confidentiality examination is requested later, the Notification will be issued within 7 to 15 days following the filing date of the request.
3.If the patent application is filed in another county, the request of confidentiality examination should be filed with paper; the Notification will be issued within one month of the filing date of the confidentiality examination request.
If the applicant does not receive a notification within 4 months of the filing date of the confidentiality examination request, the applicant is then free to file a patent application in other countries. If the applicant is ordered to suspend filing the patent application abroad but does not receive a final decision regarding the confidentiality examination, the applicant is only free to file a patent application in other countries after 6 months following the filing date of the request.

Q&A

Q: Do I need to request a confidentiality examination if I have no plan to file a patent application in China?
A: As stated by Chinese Patent Law, requesting a confidentiality examination for any invention or utility model developed in China is to reverse the right for filing a patent application in China. However, skipping the confidentiality examination may have consequences even if an entity or individual files patent applications only in foreign countries. According to Article 78, if an applicant has violated Article 19 and filed a patent application abroad, the applicant may be subject to an administrative sanction due to divulging national secrets. If a crime is constituted, the applicant shall then be subject to criminal liability.

Q: Is the confidentiality examination requested automatically when I submit a patent application in China?
A: A confidentiality examination is requested automatically and simultaneously only if you are filing an international patent application with the CNIPA. In all other cases, a request for the confidentiality examination must be filed separately.

Q: Is the confidentiality examination needed only if an inventor is a Chinese citizen or the patent application is filed in China first?
A: As long as the invention or utility model is developed in China, a request for a confidentiality examination should be filed, regardless of the citizenships of the inventors or the country in which the patent application is first filed.

Q: How does one determine if the invention or utility model is developed in China?
A: It is determined according to the territory, i.e., within the territory of China. However, this currently does not include Taiwan, Hong Kong, or Macau. The applicant needs to confirm the territory in which the invention is developed.

Q: If the request for a confidentiality examination is submitted after filing a patent application abroad, and the application received a notification indicating that it is not necessary to keep the technical solution confidential, would this situation be considered a violation of Article 19?
A: Yes, this situation would still be considered as a violation of Article 19 and the applicant would bear the legal consequences.