Patent Term Adjustment for Invention Patents in China

In China, the duration of invention patent right is twenty years, counted from the filing date. The second paragraph of Article 42 of the newly revised Patent Law introduces the system of compensation for the duration of patent right, that is, the compensation for the duration of patent right due to the delay in the process of being granted of an application for a patent for invention. The system is introduced below.

1. Submission of request

The patentee shall, within three months from the date of the announcement of the grant of the patent right, submit it to the China National Intellectual Property Administration (CNIPA) and pay the fee.

Up to now, CNIPA has not given clear regulations on the above fees.

2. Calculation of compensation period

The compensation period shall be calculated according to the actual number of days that the invention patent is unreasonably delayed in the process of being granted. Specifically, the number of days from the expiration of 4 years from the filing date of invention patent and the expiration of three years from the date of the request for substantive examination to the date of announcement of patent grant, minus the number of days of reasonable delay and the number of days of unreasonable delay caused by the applicant.

There is no limitation to the maximum duration compensation for the duration of patent right.

The "filing date" and "date of the request for substantive examination" in the above calculation have clear definitions in the revised Guidelines.

For an international application, the above-mentioned "filing date" refers to the date when the international application entered the national phase in China. For a divisional application, the above-mentioned "filing date” refers to the submission date of divisional application.

"The date of the request for substantive examination" refers to the date when the applicant files the request for substantive examination and pays the fee for substantive examination of the application in full. If the date of the request for substantive examination of an application is earlier than the date of publication, the abovementioned "three years from the date of the request for substantive examination" shall be counted from the publication date.

Regarding the situation of "reasonable delay" in the above calculation method, the details are as follows.

(1) The delay caused by the re-examination procedure if the patent right is granted after the re-examination stage in which the patent application documents is amended;

For the delay caused by the re-examination procedure, we have no case to judge how the patent office will determine the delay time, and we are waiting for CNIPA to supplement it later.

(2) Delays caused by the situations of suspension of procedures and preservation measures;

(3)Delay caused by other reasonable circumstances, such as administrative litigation proceedings.

Regarding the situation of "unreasonable delay caused by the applicant" in the above calculation method, the details are as follows.

(1) Where the delay is caused by failing to respond to the notification issued by the Patent Office within the specified time limit and requesting an extension of the specified time limit, the delay time shall be accounted from the expiration date of the time limit to the date when the response is actually submitted.

(2) Where the application requests for delay examination, its delay time shall be the time that the examination is actually delayed.

(3) Where the delay is caused by incorporation by reference, the delay time is the time for submitting the supplementary application documents.

(4) Where the delay is caused by the request to restore the right, the delay time shall be accounted from the expiration date of the original time limit to the issue date of notification of the approval for the request to restore the right, unless it can be proved that the delay is caused by the Patent Office.

(5) For an international application that goes through the formalities of entering the national phase in China within 30 months from the priority date, if the delay is caused due to the applicant’s failing to request the early processing, the delay time shall be accounted from the date of entering the national phase in China to the expiration of 30 months from the priority date.

3. The situations where the compensation for the duration of patent right is not applicable.

Where the same applicant applies for both a utility model patent and an invention patent for the same invention-creation on the same day and being granted the invention patent right, the duration of the invention patent right shall not be applicable for compensation.

4. Examination for the duration compensation

After examination, if the Patent Office deems that the request for compensation for the duration of patent right does not meet the conditions for compensation, the applicant shall be given at least one opportunity to state his opinions and/or make correction to the documents. For those which still do not meet the conditions for duration compensation, a decision not to allow the duration compensation shall be made.

If, after examination, the Patent Office deems that the request for duration compensation of patent right meets the conditions for compensation, it will make a decision to allow duration compensation and inform the number of days for duration compensation.

5. Registration and announcement of duration compensation

After the Patent Office has made a decision to compensate for the duration of the patent right, it shall register the relevant matters in the Patent Register and announce them in the Patent Gazette.

To sum up, in the absence of relevant cases at present, if the applicant wants to obtain the compensation for the duration of patent right, it is suggested that if the basic conditions (that is, the time requirement of four years or three years stipulated in Article 42, paragraph 2 of the Patent Law) are met, he should submit a request for duration compensation prior to the deadline, and the patent office will judge whether to compensate and the number of days for compensation. In addition, at present, the official fees involved in compensation have not yet been issued, so the applicant can submit the compensation request first, and then make up after the relevant regulations on official fees are issued. If the applicant wants to abandon the request at that time, he could choose not to pay the official fees.