As more U.S. businesses employ inventors abroad, the need for foreign filing licenses increases, especially if patent rights are first sought domestically. Obtaining foreign filing licenses may present financial and linguistic obstacles, potentially jeopardizing the priority date of a patent application or patent rights within the foreign country. Fortunately, the time and expenses required for obtaining a foreign filing license in China may be minimized by first filing a PCT request in China, followed by a bypass continuation filing in the U.S.
Consequences of Failing to Obtain Foreign Filing License in China
In contemplating whether obtaining a foreign filing license in China is worth the inconvenience, first consider the consequences of failing to request one. Failure to first properly obtain a foreign filing license in China may bar all patent rights in China. That is, if the patent application is first filed abroad without requesting a foreign filing license, then the Chinese Patent Office (SIPO) will not grant a patent. In more extreme scenarios, if the subject matter of the patent application relates to security, national defense, or other state interests, then criminal penalties may arise for the applicant.
Inventions Requiring a Chinese Foreign Filing License
The Chinese Patent Office requires a "Confidentiality Examination" of any invention or utility model developed in China before an applicant files for a patent in a foreign country. An invention is "developed in China" if the "substantive contents" of the technical embodiments of the invention or utility model have been made by an inventor within China (Rule 8 of the Implementing Regulations of Patent Law).
To identify the "substantive contents" of the application, the determining factors are the claims and the inventors of the corresponding subject matter. A person is an inventor by making "creative contributions" to the "substantive features" of the invention or creation (Rule 13 of the Implementing Regulations). For purposes of obtaining a foreign filing license, a person may be an inventor irrespective of citizenship and/or residency.
Obtaining a Foreign Filing License in China
While alternative methods exist, filing a PCT request in China offers flexibility, quick turn-around time, and convenience for retaining the priority date and minimizing costs. In China, the PCT request is considered a concurrent request for a Confidentiality Examination. Further, the PCT request may be made in English, which avoids translation costs. While foreign counsel expertise should be attained, only the transmittal fee should be paid if the applicant does not intend to nationalize the PCT application into the national phase of each country/jurisdiction. Even though a withdrawal notification will be issued due to the failure to pay the full fees, the PCT application can still serve as the priority application for later applications prior to abandonment. However, it is important to keep in mind that one drawback of this approach is that at least one applicant of the international application must have Chinese nationality or be a resident of China.
File a Bypass Continuation
A bypass continuation application in the U.S. serves as a vehicle for claiming priority to the PCT request filed in China. Bypass continuation applications offer various advantages over traditional national stage applications. For instance, bypass continuations offer more flexibility in amending and/or reformatting the specification and claims than national stage applications. This means changes to the specification and claims will be published, potentially establishing provisional rights to damages. Further, the applicant may request a Track One examination of the initial filing of the bypass continuation, which is otherwise unavailable for the initial filing of national stage applications. Additionally, the bypass continuation is subject to U.S. restriction practice instead of the unity of invention requirements controlling national stage applications. Thus, the bypass continuation is an enticing method for easing your application into the familiarity of U.S. practice.
Priority Claim the Bypass Continuation
The priority claim for the bypass application is subject to 37 C.F.R. §1.78(d)(2), which requires the bypass continuation application to specifically reference: (1) the serial number of the earlier-filed patent application; and (2) the relationship between the later and earlier-filed patent applications (e.g., the international application, or the international design application). Good U.S. patent practice includes a "Cross-Reference To Related Application(s)" section within a patent application. An example of a priority claim for a bypass application is provided below:
CROSS-REFERENCE TO RELATED APPLICATIONS
This application is a continuation application of International Application No. PCT/XXXXXX/XXXXXX, filed July 01, 2019, and entitled "XXX," the contents of which are hereby incorporated by reference in their entirety.
Final Considerations for Patent Applicants
The time and expenses required for obtaining a foreign filing license in China may be minimized by first filing a PCT request in China, followed by a bypass continuation filing in the U.S. Before filing any applications abroad, applicants should coordinate with foreign counsel regarding each application's particular circumstances and should verify requirements according to the current laws of the foreign Patent Office.
Originally published April 27, 2020.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
