Lack of Confidentiality Review: CNIPA Declares Patent Invalid

In May 2022, for the first time in Chinese history, a Chinese patent was fully invalidated by the CNIPA examination board (Decision 55586) because the patentee failed to apply for a confidentiality examination before filing the first foreign application. According to Article 20.1 of the Chinese Patent Law, any invention made in or partly made in China must first undergo a confidentiality examination at CNIPA before it can be filed as a patent outside China. If this is not done, the Chinese patent will violate Article 20.1 of the Chinese Patent Law and result in the invalidation of the corresponding Chinese patent.

Example: The company Zhejiang Jiechang Linear Motion Technology Co. Ltd. filed a Chinese patent application and later filed a U.S. patent application for the same invention in the United States. However, the company failed to conduct the necessary confidentiality examination in China before filing the patent application abroad. In order to defend the invalidation petition against the Chinese patent, Zhejiang Jiechang Linear Motion Technology would have had to prove that the invention filed abroad was not made in mainland China. However, since the company does not operate any R&D centers outside of China, the company could not defend the invalidity application.

For companies operating in China, this means that the risk of a patent being declared invalid can largely be avoided if evidence related to the patent application is kept in an appropriate manner. These measures include, for example, the file history of the patent, the address of the patent owner and the nationalities of the inventors, or file histories of the foreign application and the Chinese patent.

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