Issues Related to Patent Term Compensation in China

China's new Patent Law, revised for the fourth time in 2020, added provisions on patent term compensation. Article 42, paragraph 2, of the new Patent Law stipulates that if an invention patent is granted after four years from the date of application for the invention patent and three years from the date of the request for substantive examination, the patent administration department of the State Council shall, at the request of the patentee, grant patent term compensation for unreasonable delays in the invention patent granting process, excluding unreasonable delays caused by the applicant.

Applicable patent scope

• Article 42, paragraph 2 of the Patent Law regarding compensation for the term of invention patents applies to invention patents authorized and announced from June 1, 2021. There are no similar provisions for utility model patents and design patents.
• 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 obtains the invention patent right in accordance with Article 47, paragraph 4, of the Implementing Regulations of the Patent Law, the term of the invention patent right shall not be subject to the provisions of Article 42, paragraph 2, of the Patent Law.

Filing of request and related official fees

• According to the Patent Examination Guidelines, a request for patent term compensation is filed by the patentee. If a patent is jointly held by multiple patentees and no patent agency has been appointed, the request for patent term compensation is handled by the representative. If a patent agency has been appointed, the request for patent term compensation is handled by the patent agency itself.
• Patent holders requesting patent term compensation should submit a request to the Patent Office within three months of the date of the patent authorization announcement. Requests for patent term compensation pursuant to Article 42, Paragraph 2 of the Patent Law should include checking the appropriate box on the "Request for Patent Term and Pharmaceutical Patent Term Compensation" and submitting the request to the Patent Office. No supporting documentation is required. The fee for each request is RMB 200.

Determination of compensation period

• If compensation for the patent term is granted, the compensation period shall be calculated based on the actual number of days of unreasonable delay in the authorization process of the invention patent. The actual number of days refers to the interval from the date when four years have passed since the application date of the invention patent and three years have passed since the date of the request for substantive examination to the date of announcement of the grant of the patent right, minus the number of days of reasonable delay and the number of days of unreasonable delay caused by the applicant.

Application date in patent term compensation

• After ordinary patent applications, PCT international applications entering the Chinese national phase, and divisional applications are submitted to the China Patent Office, the Patent Office begins examination. From this perspective, the application date referred to in Article 42, Paragraph 2 of the Patent Law is the actual filing date with the China Patent Office.
  • For ordinary patent applications, it refers to the actual filing date with the Chinese Patent Office.
  • For PCT international applications entering the Chinese national phase, this refers to the date on which the international application entered the Chinese national phase.
  • For divisional applications, this refers to the actual filing date of the divisional application at the China Patent Office.

Date of request for substantive examination in patent term extension

• The date of request for substantive examination refers to the date on which the applicant files a request for substantive examination in accordance with Article 35, paragraph 1 of the Patent Law and pays the substantive examination fee for an invention patent application in full in accordance with Article 113 of the Implementing Regulations of the Patent Law. If the date of request for substantive examination of an invention patent application is earlier than the date of publication as referred to in Article 34 of the Patent Law, the period of three years from the date of request for substantive examination as referred to in Article 42, paragraph 2 of the Patent Law shall be calculated from the date of such publication.

Four years have passed since the date of application for invention patent and three years have passed since the date of request for substantive examination

• Four years have passed since the date of application for the invention patent and three years have passed since the date of the request for substantive examination. The later of these two dates will be used as the time calculation point.

Reasonable delays in the authorization process

• Reasonable delays in the authorization process include:
  • Amend the review procedure for patent application documents in accordance with Article 66 of the Implementing Regulations of the Patent Law
  • Suspension procedure pursuant to Article 103 of the Implementing Regulations of the Patent Law
  • Preservative measures pursuant to Article 104 of the Implementing Regulations of the Patent Law
  • Other reasonable circumstances such as administrative litigation procedures, etc.

Unreasonable delay caused by the applicant

• The following circumstances constitute unreasonable delays caused by the applicant:
  • Delay caused by failure to respond to a notification issued by the Patent Office within the specified time limit, the number of days of delay is from the expiration of the time limit to the date of actual submission of the response
  • If you apply for delayed review, the number of days of delay is the actual number of days of delayed review.
  • Delays caused by incorporation by reference are the same as the delays caused by Article 45 of the Implementing Regulations of the Patent Law.

Delays caused by requesting restoration of rights

• The number of days of delay is from the original expiration date to the date of issuance of the Notice of Approval of the Request for Restoration of Rights, unless it can be proven that the delay was caused by the Patent Office.

Delays in PCT national phase entry in China

• For international applications that complete the formalities for entering the Chinese national phase within 30 months from the priority date and the applicant fails to request early processing, the number of days of delay caused shall be from the date of entering the Chinese national phase to the date on which 30 months have passed since the priority date.

Approval, registration and announcement of requests for patent term compensation

• If, after examination, it is found that the request for patent term compensation meets the conditions for term compensation, the Patent Office will make a decision to grant term compensation and inform the number of days for term compensation.
• If, after examination, the Patent Office deems a request for patent term compensation to be ineligible for term compensation, it will grant the applicant at least one opportunity to state its opinion and/or supplement the documents. If the request still does not meet the term compensation conditions, the Patent Office will make a decision not to grant term compensation.
• If you are dissatisfied with the approval decision on patent term compensation, you may apply for administrative reconsideration to the Patent Office.
• After the Patent Office makes a decision to grant compensation for the patent term, it will register the relevant matters in the patent registration book and announce it in the Patent Gazette.

Payment standards for annual fees during the patent compensation period

• The annual fee for the patent compensation period is 8,000 yuan per patent per year, with no fee charged for any portion less than one year. If the Patent Office makes a decision to grant patent term compensation, the patent holder must pay the annual fee in full, in one lump sum, before the expiration of the 20-year patent term, in accordance with the requirements of the patent term compensation approval decision. There are no late payment fees or restoration periods for the annual fee during the patent compensation period, and the circumstances for reductions stipulated in the Patent Fee Reduction Measures are not applicable. If the annual fee for the patent compensation period is not paid or not paid in full by the due date, no patent term compensation will be granted.