As an increasing number of foreign companies establish research and development (R&D) facilities in China, leveraging the country's vast talent pool of science and engineering graduates has become a strategic move. With the rapid growth of Chinese R&D centres, the number of homegrown inventions is also expected to rise.

However, this raises an important question: should these patents be filed in China first?

While Chinese patent law does not explicitly require that inventions made in the country be filed first, it does introduce a procedure known as the "foreign filing license" (FFL). Understanding the process is crucial for foreign applicants looking to protect their intellectual property effectively.

What is a foreign filing license?

The foreign filing license is a regulatory requirement mandating entities or individuals intending to file a patent application in another country for an invention or utility model developed in China. It involves reporting their intention to the patent administrative department of the State Council for a confidentiality review. Failure to comply with this requirement can result in the invalidation of any resulting Chinese patent.

In simple terms, if an applicant does not seek patent protection in China for an invention developed there, they can bypass the FFL requirement. However, if they do wish to obtain a Chinese patent, they must adhere to this process.

Options for foreign filing of patents

Under current law, companies have three primary options for filing patents for inventions made in China.

1: Requesting an FFL before filing abroad

Applicants can choose to file their patent application outside of China first. In such cases, they must request an FFL from the China National Intellectual Property Administration (CNIPA) before proceeding with their foreign application. In practice, since most technologies are not classified as sensitive or restricted, clearance is typically granted within one to two months. The request for FFL must be submitted in Chinese and include a description of the technical solutions.

2: Filing a Chinese patent first

Alternatively, applicants can file a Chinese patent application first. They may then request an FFL from CNIPA either at the time of filing the Chinese patent or afterward, but before filing abroad. This option allows applicants to establish their rights in China before seeking international protection.

3: Filing a PCT application via CNIPA

Another option is to file a Patent Cooperation Treaty (PCT) application through CNIPA as the international receiving office. By choosing this route, applicants do not need to request an FFL separately, as it is assumed that such a request has been made. This option may be particularly convenient for multinational companies with operations in China since it allows them to use the PCT system to file patents across multiple jurisdictions. Additionally, PCT applications can be filed in English, which is beneficial for many foreign applicants. However, at least one applicant must be a Chinese entity or citizen for CNIPA to serve as the receiving office.

Defining "Made-in-China" inventions

Determining whether an invention qualifies as Chinese-made can be complex, particularly in cases involving joint R&D between foreign parent companies and their Chinese subsidiaries. The key principle here is identifying where the substantial part of the invention was developed, rather than focusing on the nationality of the inventors or applicants.

For example, if a foreign company collaborates with its Chinese R&D centre but develops an invention primarily outside of China, it may not be subject to the FFL requirement. Conversely, if significant parts of the invention were developed within China, then compliance with FFL procedures becomes necessary.

Conclusion

As more foreign companies invest in R&D within China, understanding the implications of the foreign filing license is essential for effectively protecting intellectual property rights. By familiarizing themselves with the options available for filing patents and ensuring compliance with local regulations, businesses can safeguard their innovations and maximize their market potential in one of the world's largest economies. Engaging with legal professionals specializing in Chinese patent law can offer valuable guidance throughout this process and help navigate any complexities that may arise.

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