As stipulated in Article 42.2 of the fourth revision of the Chinese Patent Law, which was officially implemented on June 1, 2021: Where a patent for invention is granted after four years from the date of filing and after three years from the date of requesting substantive examination, the patent administration department under the State Council shall, upon the request of the patentee, provide a remedy of patent term extension due to the unreasonable delayed processing of patent applications for inventions, except for the unreasonable delay caused by the applicant.
Since the implementation of the new Patent Law, applicants have been paying more attention to patent term compensation. For cases that basically meet the compensation standards, many patentees have submitted requests for patent term compensation within the time limit. However, because the revisions of the Implementing Regulations of the Patent Law and the Patent Examination Guidelines had not been announced at that time, and the specific examination standards had not been determined yet, the China National Intellectual Property Administration (hereinafter referred to as "the CNIPA") has not examined the submitted requests for patent term compensation yet.
According to Order No. 769 of the State Council of the People's Republic of China, the revised Implementing Regulations of the Patent Law were announced on December 21, 2023, and officially implemented on January 20, 2024. Accordingly, the accompanying revised Patent Examination Guidelines were also announced synchronously. Until now, various provisions on patent term compensation have been determined. It is foreseeable that the CNIPA will gradually begin to examine the requests for patent term compensation submitted after June 1, 2021. The author will now provide a brief summary of the relevant contents on patent term compensation. The relevant contents are briefly summarized so that patent procedure personnel and applicants/patentees can use those as a reference to determine whether the invention patent is eligible for patent term compensation and how to calculate possible patent term compensation.
Timing of submission of patent term compensation:
A request should be submitted to the CNIPA within three months from the date of announcement of grant for an invention patent.
The requests for patent term compensation submitted before January 20, 2024, shall be submitted in paper form; and the requests for patent term compensation submitted on or after January 20, 2024, shall be submitted electronically for electronic applications. Currently, the standard for payment of fees for patent term compensation has not been announced yet. The author's understanding is that the fees should be determined on a case-by-case basis, with compensation provided after each individual case has been examined.
Calculation method of patent term compensation (PTA):
Announcement date of grant – 4 years from the filing date of application – Number of days of reasonable delay – Number of days of unreasonable delay caused by the applicant, or
Announcement date of grant for a patent – 3 years from the date of request for substantive examination – Number of days of reasonable delay – Number of days of unreasonable delay caused by the applicant
If any of the calculation results of the above two calculations is ≤ 0, the patent term compensation cannot be carried out; or if the results of the two calculations mentioned above are both ＞ 0, then the smaller number of days calculated above will be used as the time for patent term compensation. In other words, the date calculated by the two formulas is the smaller value.
According to the above calculation method, it is necessary to clarify the definition of each date involved, among which:
Announcement date of grant for a patent: refers to the announcement date of grant for a patent indicated on the patent certificate, which is also the date when the patent is announced to be granted on the CNIPA official website.
Filing date: For the Paris Convention/first national application, the filing date refers to the actual filing date in China (i.e., the filing date referred to in Article 28 of the Patent Law).
For divisional applications, the filing date refers to the filing date of the divisional application.
For PCT national phase applications, the filing date refers to the date when the international application enters the Chinese national phase.
Date of request for substantive examination: If the date of request for substantive examination is earlier than the date of publication, the date of request for substantive examination shall be the date of publication (note that it is the actual date of publication, not the date of issuance of the notice of publication); or if the date of request for substantive examination is later than the publication date, the date of request for substantive examination refers to the actual date of submission the request for substantive examination (note: specifically refers to the date when the submission of request for substantive examination and the payment of the fee of request for substantive examination are both completed. If the submission of request for substantive examination and the payment of the fee of request for substantive examination are not completed on the same day, the later completion date will be taken as the date of submission for substantive examination).
Secondly, the definition of the number of days of reasonable delay needs to be clarified.
According to the provisions of Section 2.2.1 of Chapter 9, Part 5 of the Patent Examination Guidelines 2023, reasonable delays include:
- The reexamination procedure for amending patent application documents in accordance with Rule 66 of the Implementing Regulations of the Patent Law, (note that if no amendment to the application documents is made during the reexamination procedure, there is no need to subtract the time spent in the reexamination procedure when calculating patent term compensation (PTA) ).
- Suspension procedures in accordance with Rule 103 of the Implementing Regulations of the Patent Law.
- Preservation measures in accordance with Rule 104 of the Implementing Regulations of the Patent Law.
- Other reasonable circumstances, such as administrative litigation procedures, etc.
Finally, the definition of unreasonable delay caused by the applicant needs to be clarified.
According to the provisions of Section 2.2.2 of Chapter 9, Part 5 of the Patent Examination Guidelines 2023, unreasonable delays caused by applicants include:
- Delay caused by not responding to the notification issued by the Patent Office within the specified time limit. The number of days of delay is from the expiration date of the time limit to the date of actual submission of the response.
- For applying for delayed examination, the number of days of delay shall be the actual number of days of delayed examination.
- Delay caused by Incorporated by Reference, the number of days of delay shall be the number of days caused by Rule 45 of the Implementing Regulations of the Patent Law.
- Delay caused by the request for restoration of rights, the number of days of delay is from the expiration date of the original period to the date of issuance of the approval notification for the request for restoration of rights unless it can be proven that the delay was caused by the CNIPA.
- For international applications entering the national phase in China within 30 months from the priority date, if the applicant does not request early processing, the number of days of delay is counted from the date of entry into the national phase in China to the end of the 30-month period from the priority date.
In addition, special attention should be paid to the fact that if the same applicant applies for both a utility model patent and an invention patent for the same invention on the same day, and obtains the invention patent right in accordance with the provisions of Rule 47, Paragraph 4 of the Implementing Regulations of the Patent Law, the invention shall not apply to the term of patent rights according to the provisions of Article 42, Paragraph 2 of the Patent Law.
After clarifying the above definitions, several cases are illustrated to elucidate how to calculate the number of days of patent term compensation:
Case 1 (an invention patent application through the Paris Convention)
Filing date: January 30, 2019
Publication date: August 7, 2020
Date of request for substantive examination (with full payment of the examination fee): January 30, 2019
Announcement date of grant for a patent: January 9, 2024
An OA1 was issued for this case, and announcement of grant for a patent was issued after responding within the OA1 deadline. The date of request for substantive examination of this case was prior to the publication date, and then the publication date was taken as the date of the date of request for substantive examination. The PTA calculation method for this case is:
20240109 - (20190130 + 4 years) = 344 days, or
20240109 - (20200807 + 3 years) = 155 days
Therefore, the final compensation period for this case shall be 155 days, and the final compensation period obtained needs to be determined by the CNIPA after examination and an examination decision will be issued.
Case 2 (PCT patent application entering the national phase for an invention patent)
International filing date: April 6, 2018
National phase entry date: November 8, 2019 (when entry into China's national phase, the applicant requested to be processed in advance)
Publication date: December 31, 2019
Date of request for substantive examination: April 1, 2020 (with full payment of the examination fee)
Announcement date of grant for a patent date: January 9, 2024
The date of request for substantive examination of the case was after the publication date, and then the date of request for substantive examination was taken as the actual date of request for substantive examination. At the same time, the deadline for OA2 in this case was September 15, 2023. However, the deadline expired without filing a response, resulting in a 2-month extension. The actual date for submission of the response for OA2 was November 14, 2023.
And then the PTA calculation method for this case is:
20240109 - (20191108 + 4 years) - (20231114 - 20230915) = 2 days, or
20240109 - (20200401 + 3 years) - (20231114 - 20230915) = 223 days
Therefore, the number of days of compensation in this case shall be 2 days, and the final compensation period obtained needs to be determined by the CNIPA after examination and an examination decision will be issued.
Case 3 (divisional application of an invention patent)
Filing date: August 19, 2014
Submission date of divisional application: August 23, 2019
Publication date: November 19, 2019
Date of request for substantive examination: October 16, 2019 (with full payment of the examination fee)
Announcement date of grant for a patent: January 9, 2024
The date of request for substantive examination of this case was prior to the publication date, and then the publication date was taken as the date of the date of request for substantive examination. At the same time, this case has gone through the reexamination procedure. The rejection decision was issued on June 27, 2023, and the Reexamination Decision (Continuing for Examination) was issued on October 9, 2023. The claims were revised during the reexamination procedure.
And then the PTA calculation method for this case is:
20240109 - (20190823 + 4 years) - (20231009 - 20230627) = 35 days, or
20240109 - (20191119 + 3 years) - (20231009 - 20230627) = 312 days
Therefore, the number of days of compensation in this case shall be 35 days, and the final compensation period obtained needs to be determined by the CNIPA after examination and an examination decision will be issued.
Case 4 (a first filing application for invention patent, with an application for utility model at the same date)
Filing date: September 14, 2018
Publication date (request for earlier publication): November 23, 2018
Date of request for substantive examination: December 5, 2018
Announcement date of grant for a patent: December 22, 2023
The date of request for substantive examination of this case was after the publication date, and then the date of request for substantive examination was taken as the actual date of request for substantive examination, and the case was granted after responding to OA1.
The calculation method of PTA in this case shall be:
20231222 - (20180914 + 4 years) = 464 days, or
20231222 - (20181205 + 3 years) = 747 days
In theory, this case shall be compensated for 464 days. However, there exists an application for utility model filed on the same date. When the application for invention patent was granted, the applicant declared the abandonment of the utility model patent rights before obtaining the invention patent rights. Therefore, this case did not meet the requirements for patent term compensation and cannot be granted patent term compensation.
If the patentee disagrees with the CNIPA's decision not to grant compensation for the duration of the patent right or the calculated number of days of compensation, they may dispute the decision by filing an administrative reconsideration or lawsuit within a specified time period in order to protect the patentee's interests.
The above examples only represent several situations commonly encountered in actual work. However, patent procedure personnel should also be proficient in handling other reasonable delays as well as unreasonable delays caused by applicants. When determining patent term compensation, it is necessary to fully consider the circumstances listed in the Implementation Regulations of the Patent Law and the Patent Examination Guidelines. For cases eligible for term compensation, patentees should be promptly reminded whether they need to submit a request for patent term compensation to avoid any loss of their interests.
The above contents are just a brief summary made by the author based on the revised Implementing Regulations of the Patent Law and the Patent Examination Guidelines. However, due to the CNIPA not examining the request for patent term compensation and the actual examination results not being known, the above calculation results are just for reference only. Meanwhile, due to the annual fee payment standard for patent term compensation not being announced, subsequent, patent procedure personnel should pay more attention to the disclosure of examination results and related contents, and be sure to pay the fee in full within the time limit to successfully obtain the patent term compensation.
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.
