Introduction

The State Intellectual Property Office (SIPO) of P.R. China is one of the competent receiving offices under the Patent Cooperation Treaty (PCT). According to the PCT Article 11(1), one of the minimum requirements for recording an international filing date is that at least one applicant should be a national or resident of a PCT contracting state. Furthermore, at least one of the applicants should have legitimate ground to file with the receiving office for reasons of nationality or residence. As such, an eligible applicant to file with SIPO is a Chinese national, or an expatriate, a foreign entity, or a foreign organization residing or having a business establishment in China, pursuant to PCT Rule 18.1. It is worth noting that citizens of Hong Kong, Macau, and Taiwan are by law Chinese nationals.

Applicant of Convenience

According to the foregoing rule, an international enterprise having no business establishment yet wishes to file a PCT application with SIPO as the sole applicant would be red-flagged. Fortunately, it is possible to incorporate in the application an “applicant of convenience” merely to meet the filing requirement. Namely, the foreign company may name a natural person of Chinese national, customarily one of the employed inventors, on the Request Form in order to successfully file the PCT application with SIPO. The ownership of the application may be assigned later by executing an assignment. By doing so the named Chinese applicant would be able to transfer his share of ownership on the patent application to the primary applicants. The primary applicants thus possess the entire ownership of the application.

Strategic Alternative

Oftentimes it is practically difficult for the primary applicant to obtain an executed assignment from an applicant of convenience who was formerly employed but have left the company. According to PCT Rule 4.5(d), a PCT application permits to indicate different applicants for different designated states. It suggests an alternative approach to resolve the matter, which is to designate the same Chinese national as an applicant solely for a PCT contracting state where the primary applicant has no interest or highly unlikely to pursue patent rights, (namely, a “state of no interest”) such as the D.P.R. Korea (PK). Because the applicant will cease from prosecuting the application in that state of no interest, the PCT application can be filed with SIPO and meanwhile the primary applicant will be the sole ownership entitled to patent rights in the desired states entered later on.

For the sake of completeness, the executed assignment from the applicant of convenience to the primary applicant for use in the national stage of the “state of no interest”) could be obtained from the applicant of convenience at the time of filing the PCT application.