Xian Mu
I. Legislative Background
According to the regulations of the Chinese Patent Law, the protection term of the invention patents is calculated as of the application date and lasts for twenty years. However, the executable start of the patent rights is the issued date, resulting in the actual protection term is less than twenty years. In practice, the prosecution period for some invention patent applications are longer due to various factors, thereby shortening their actual protection period. This goes away from the legislative purpose of protecting the legitimate rights of patent owners and promoting the inventive activities. To address this issue, the fourth amendment to the Chinese Patent Law, which came into effect on June 1, 2021, established the Patent Term Adjustment (“PTA”) system, allowing patent owners to request compensation for loss of the patent term due to the unreasonable delay during prosecution. The New Detailed Rules for the Implementation of the Patent Law (hereinafter referred to as “New Detailed Rules”) refines the substantive and procedural rules of the PTA in Articles 77, 78, 79, and 84.
II. Substantive Rules
1. Applicable Patent Types and Scope
The PTA only applies to the invention patents issued after June 1, 2021. That means neither utility model patents nor design patents are not eligible for the PTA, and patents issued before June 1, 2021 are not eligible, too. In addition, the PTA does not apply to the invention patent that has a “twin” utility model application applied based on the same subject matter on the same day, because the invention patent, before granted, has been protected under the twin utility model, without the problem of shortening the term due to unreasonable delay.
2. How to Request for the PTA
The PTA is started at the request of the applicant. The CNIPA does not start it ex officio.
3. Basic Requirements
The invention patents which are granted after more than four years from the application date and more than three years from the date of the substantive examination request.
4. How to Determine "Application Date"
For international applications, "application date" refers to the date the international application enters the national stage in China, rather than the international filing date. For divisional applications, "application date" refers to the filing date of the divisional application, rather than the application date of its parent application. For other applications, "application date" refers to the submission date of the application documents before the CNIPA, rather than the priority date.
5. How to Determine "Date of Substantive Examination Request"
"Date of Substantive Examination Request" refers to the start of the substantive examination procedure. In practice, if the applicant has submitted the substantive examination request and fully payed the examination fee before the publication date of the invention application, the publication date is considered as the " Date of Substantive Examination Request". If the applicant submits the substantive examination request or fully pays the examination fee after the publication date, the later one of the date of submitting the substantive examination request and fully paying the examination fee is considered as the " Date of Substantive Examination Request ".
III. Procedural Rules
1. Formalities have to go through for Requesting the PTA
PTA request should be submitted before the CNIPA within three months from the issued date of patents, regardless of the New Detailed Rules in effect or not. Accordingly, the applicants or patent owners should file the PTA requests within this deadline as soon as possible. Additionally, the applicants or patent owners are required to pay the corresponding fees. However, the specific fee standards for the PTA have not been issued by the government by far. The applicants or patent owners can await the CNIPA's fee notification and make payments thereafter.
2. How to Calculation days to be compensated under the PTA
The days which can be compensated under the PTA are calculated using the following formula:
PTA = the Issued Date – the later one of the date after four years from the application date and the date after three years from the date of substantive examination request – Days of reasonable delay – Days of unreasonable delay caused by the applicant
“Reasonable delay” includes the duration of reexamination procedures during which the applicant has made amendments, the duration of administrative litigation procedures, and the duration of suspension procedures due to ownership disputes or court-ordered protective measures. That means the delay caused by aforementioned reexamination procedures, administrative litigation procedures and suspension procedures will not be compensated under the PTA.
"Unreasonable delay caused by the applicant" includes:
(1) Delays due to not responding to the Office Actions within the specified period, where the days from the expiration date of responding to the Office Actions to the actual responding date will not be compensated.
(2) Delays caused by the requests for delaying examination, where the actual delay days due to the requests for delaying examination will not be compensated.
(3) Delays caused by requesting for incorporating by reference, where the actual days delayed in accordance with Article 45 of the New Detailed Rules will not be compensated.
(4) Delays caused by requesting the restoration of rights, where the days of delay from the original expiration date to the date of issuance of the approval notice for restoration of rights will not be compensated, unless it can be proven that the delay was caused by the CNIPA.
(5) Delays for international applications entering the national phase within 30 months from the priority date without requesting early processing, where the days from the date of entering the national phase to 30 months from the priority date will not be compensated.
3. Administrative Review of the PTA Requests
Although the PTA is applicable to the invention patents issued from June 1, 2021, the PTA requests is not examined until the New Detailed Rules is effect. If the PTA request concerns a patent whose term has expired before the effective date of the New Detailed Rules, and the CNIPA, upon review, deems it eligible for compensation, a decision will be made to grant the compensation, with the compensation term starting from the expiration date of the original patent term.
The review of the PTA requests should follow the principle of a hearing. According to the Guideline, if, after review, the CNIPA considers a PTA request not meeting the requirements, it should provide the applicant with at least one opportunity to state their opinions and/or submit corrective documents.
4. Remedies for the PTA Decisions
The Guideline accompanying the New Detailed Rules specify two possible administrative outcomes for the PTA requests, namely "the Decision to Reject the PTA Request" and "Decision to Grant the PTA". The applicant can request for the administrative reconsideration before the CNIPA or directly appealed to the Beijing Intellectual Property Court if he disagrees with the decision.
5. Recording and Issue of PTA
When the PTA is allowed, it will be recorded and issued to the public. We guess there may be an reannouncement of the patent if the PTA is allowed after the issued date.
IV. Practical Recommendations
Patent applicants or their agents, upon receiving " the Office Action of Granting the Patent" or "Registration Notice", should promptly check whether there is any unreasonable delay eligible for compensation, using the formula mentioned above. If eligible, they should submit the request and pay the fee within three months from the issued date. Furthermore, it is necessary to log in the official website of the CNIPA to review the PTA information when determining the legal status of a patent, because the information recited on its issued publication may have been updated and changed.
Xian Mu
Ms. Mu used to be a patent examiner. She joined NTD in 2014 and has extensive experience in patent application, invalidation, infringement and search. She provides legal services in such areas as IP litigation, patent reexamination and invalid action, patentability and infringement assessment, patent search, patent FTO, IP due diligence and other IP-related affairs.
Over the years, Ms. Mu has represented many patent cases for some global companies including Bosch, Amphenol, Daimler, ARaymond and many others. Ms. Mu has abundant experience in handling legal affairs related to mechanical engineering, material engineering, semiconductor, electronics, electrical engineering, medical equipment, energy and power engineering, artificial intelligence and other technologies.
