Recently, our firm won the second instance of an administrative lawsuit on invalidation declaration of a patent for invention, successfully having the patent fully invalidated by th...
Recently, our firm won the first instance of an administrative litigation case for invalidation of an invention patent, in which it is ruled that the invention patent should be comp...
Requirement for Requesting PTE and Noteworthy Points in Calculation
Wenhui ZHANG
Chinese Patent Attorney
I. Introduction
The fourth amendment to the Patent Law of China enacted as of June 1, 2021 introduced the compensation on the term of patent. Under Article 42.2 of the Patent Law,
“Where an invention patent application is granted after four years from the filing date 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, award a compensation on the term of patent for unreasonable delay in granting the patent for invention, but the compensation on patent term shall not apply to the unreasonable delay caused by the applicant.”
Along with the implementation of newly adapted Implementing Regulations of the Patent Law and Guidelines for Patent Examination since January, 2024, increasing attention has been drawn to the calculation method and the examination of the compensation on the term of patent. This article aims to provide an overview of the conditions for the compensation on patent term, the method for calculating the extension of the term of patent, and some special circumstances, referencing to relevant articles and provisions of Implementing Regulations of the Patent Law and Guidelines for Patent Examination and the relevant practices. Please note that the “compensation on the term of patent” mentioned herein does not involve the compensation on the term of a patent for invention related to a new drug prescribed in Article 42.3 of the Patent Law.
II. Conditions for awarding the compensation on patent term
1. Type of patent: patent for invention
The type of patent to which the compensation on the term of patent is awarded is limited to patents for invention. This compensation does not apply to utility models or design patents.
2. Request for compensation
The request for the compensation on the term of patent should be made by the patentee (or an entrusted patent agent). The patentee shall file a request for compensation on the term of patent with the CNIPA within three months from the issue date of the patent and pay the corresponding fee (200 yuan). If the request is not filed with the CNIPA before due date, or if the fee is not paid or paid in full, the request shall be deemed not to have been filed, and no remedy shall be available.
3. Requirement for delayed time (satisfying both the “four years” requirement and the “three years” requirement)
A premise of being awarded the compensation on the term of patent is that the following two conditions are both satisfied:
“Four years”, that is, the issue date of the patent is later than the day on which four whole years elapsed from the filing date (referred to as the “four-year date”), or the time spent for granting exceeds four years from the filing date.
In the article relating to the compensation on the term of patent, the term “filing date” should be interpreted as the date on which the CNIPA receives the application for the patent for invention. For example, for an international application and a divisional application, the filing date should be the date on which the international application enters the Chinese national phase and the date on which the divisional application is filed, respectively.
“Three years,” that is, the issue date of the patent is later than the day on which three years elapsed from the date of requesting substantive examination (referred to as the “three-year date”), or the time spent for granting exceeds three years from the date of requesting substantive examination.
In order to determine the date of requesting substantive examination, a comparison should be carried out between two dates, i.e.,
i. the date on which the request for substantive examination is submitted and the fee for substantive examination of the patent for invention is paid in full;
ii. the publication date of the patent application.
The date of requesting substantive examination is whichever is later of the above two dates.
III. Method for calculating the extension of the term of patent
Accurately estimating whether the compensation on the term of patent would be awarded and the number of days compensable is crucial for a patentee in deciding whether to file a request for the compensation on the term of patent.
Based on the concepts clarified previously, the following formula for calculating the extension of the term of patent is obtained:
Patent term extension (PTA)=min(issue date-four-year date, issue date-three-year date)-reasonable delay in granting-unreasonable delay attributable to the applicant
The formula is further explained below.
1. Min (issue date-four-year date, issue date-three-year date)
The smaller one of the two differential times is taken.
2. Reasonable delay in granting
Reasonable delay in granting includes delay caused by reexamination procedure of amending the application documents under Rule 66 of the Implementing Regulations, suspension under Rule 103 of the Implementing Regulations, preservation measures taken under Rule 103 of the Implementing Regulations, and administrative proceedings or other reasonable circumstances.
3. Unreasonable delay attributable to the applicant
The Guidelines for Patent Examination specifies that the following five circumstances are unreasonable delay attributable to the applicant:
i. Delay due to failure to respond to a notification within the specified time limit
As set out in the Guidelines, the number of days delayed is counted from the due date until a response is formally submitted.
ii. Delay due to deferred examination
If deferred examination is applied for, the number of days delayed is the actual number of days by which the examination is actually postponed, taking into account where the request for deferred examination is withdrawn. The number of days delayed caused by a deferred examination is the number of days between the date on which the deferral takes effect and the date on which it ends.
iii. Delay due to incorporation by reference
The number of days delayed is the number of days between the date on which the CNIPA receives the application for a patent for invention and the date of submission of the confirmation statement on incorporation by reference.
iv. Delay due to request for restoration
The number of days delayed is the number of days from the expired due date to the date on which a notification of decision on request for restoration of right is issued, unless there is proof that the delay is attributed to the CNIPA.
v. Delay due to applicant’s failure to request expedited processing for an international application entering the Chinese national phase before the expiration of 30 months from the priority date
The number of days delayed is the number of days from the date of entering the Chinese national phase to the expiration of 30 months from the priority date.
IV. Special circumstances
1. For the afore-mentioned reexamination procedure, the following determination should be made case by case:
If the applicant amends the application document during the reexamination procedure, the time taken for the reexamination procedure (the period from the issue date of the Decision of Rejection to the issue date of the Reexamination Decision) will be considered to be reasonable delay during the granting process and therefore subtracted from the compensated term of patent.
As to a case where only arguments are made in the reexamination procedure while the application document is not amended, since the patent is granted based on the application document without substantive changes, the time taken for the reexamination procedure will not be subtracted from the compensated term of patent.
2. Where the same applicant files an application for a patent as well as a utility model for the same invention and obtains a patent for invention under Rule 47.4 of the Implementing Regulations, i.e., obtaining a patent for invention by wavering the utility model, the provision of Article 42.2 of the Patent Law does not apply to the term of the patent.
3. Where the same applicant files an application for a patent as well as a utility model for the same invention and obtains a patent for invention by amending the application for invention patent to cover a different scope of protection from the utility model, the time from the filing date of the patent application to the time of the first amendment is considered to be reasonable delay during the granting process and therefore subtracted from the compensated term of patent。
4. Where the same applicant files an application for a patent as well as a utility model for the same invention, if the application for utility model is not approved for various reasons while a patent has been granted after examination, the applicant should submit a statement to the CNIPA to explain that the subject case no longer falls in the circumstance where the same applicant files an application for a patent as well as a utility model for the same invention, and request for the compensation on the term of patent subsequently, so that the determinations of the above items 2 and 3 could be saved.
V. Conclusion
The term of a patent is the valid period during which the patentee may enforce its rights. Accurately estimating the number of days of compensated patent term in advance and making judicious use of the term of patent compensation system are of paramount importance in safeguarding the legitimate rights and interests of the patentee. Currently, China’s patent term compensation (PTA) system lingers in a trial phase, with uncertainties and ambiguities in the criteria and the handling procedures in some special circumstances. It is anticipated that the rules for calculating the compensated patent term would be refined continuously through accumulated experience in the handling of specific cases in the future.
