Excess Claim Fee for Foreign Patent Applications Entering China

Fei Shan

Chemistry & Biotechnology Department

Patent  Attorney

 

Welcome to Linda Liu & Partners on air. This is Fei Shan

 

Today, let’s talk about how to avoid or reduce the excess claim fee for patent application in China.

 

A foreign patent application may enter China via PCT or the Paris Convention. Since the CNIPA charges the excess claim fee differently for applications via PCT and applications under the Paris Convention, the applicant may employ special strategies for applications entering China through the two paths, so as to reasonably avoid or reduce the excess claim fee. Furthermore, regardless of the excess claim fee, by making full use of the opportunity to make voluntary amendments, it is possible to benefit the subsequent examination and gain a more desirable scope of protection.

 

1. Foreign Patent Applications Entering China via PCT

 

According to China’s practice of patent examination, the excess claim fee for a PCT application entering the Chinese national phase is determined based on the number of the original claims of the PCT application. Generally, amendments made in the subsequent stages (including amendments made under Article 28 or 41 of PCT upon entering the Chinese national phase or voluntary amendments made within the period for making amendments on the applicant’s initiative), such as cancellation or addition of claims, will not generate excess claim fee. Furthermore, an increase or decrease in the number of claims at the patent granting stage as compared with the number of claims upon filing will not generate additional charges. Therefore, for a PCT application entering the Chinese national phase, the excess claim fee mainly arises from excessive claims of the original PCT application. The excess claim fee will be charged in a case where there are more than 10 claims.

 

The charges for a PCT application vary from the international phase to specific national phases. The applicant often considers the processing of a PCT application in light of the examination in the possible designated offices (DOs) and the fees charged in these offices. The excess claim fee charged in the PCT national phase of China is different from that of all the other countries. If the applicant intends to avoid or reduce the excess claim fee in the Chinese national phase or wants to make full use of the PCT national entry period for making voluntary amendments even if the excess claim fee cannot be avoided or reduced, the following is a feasible strategy.

 

At the stage where the PCT application is still being drafted and will possibly enter the Chinese national phase later, the applicant may consider reducing the items of claims in drafting, so as to avoid or reduce the possible excess claim fee. For example, it is preferable that the international application document is drafted making use of multiple-dependent claims depending on preceding multiple dependent claims, and claims incorporating multiple preferable technical solutions or coordinate technical solutions, thereby covering as many technical solutions as possible in the scope of protection while avoiding or reducing the excess claim fee.

 

Alternatively, the international application may only include a limited number of items (e.g., 10 items) in the claims and completely disclose the other technical solution desired to be protected in the specification. As such, upon entering the Chinese national phase or in the period for making voluntary amendments, it is possible to incorporate the technical solution described in the specification into the amended claims, thereby avoiding or reducing the excess claim fee while including the technical solution desired to be protected in the claims pending for examination before the substantive examination starts.

 

At the stage where the PCT application has been filed with the receiving office (RO) and not yet entered the Chinese national phase, the applicant may apply in the subsequent stages of the strategy described below because the number of claims included in the international application has been determined, in other words, whether the excess claim fee will be charged has been determined.

 

In a case where the claims of the original PCT application include excessive items, the applicant may consider reserving the original claims till the examiner issues an Office Action, because even if some claims are deleted, the excess claim fee and the examination fee will still not be reduced. Usually, unless the application has the defect of lacking unity, the Chinese examiner will conduct the substantive examination based on the reserved claims, which increases, to some extent, the efficiency of the applicant in responding to the OA.

 

In a case where the claims of the original international application includes only a few items, but the applicant wants to include more technical solutions in the scope of protection, the applicant may first consider adding claims, independent claims in particular, upon entering the Chinese national phase or in the period for making voluntary amendments. In such a case, no additional charge will be generated. Furthermore, the afore-mentioned two timings are the best opportunities for adding independent claims. It will become very difficult to add independent claims at any time other than these two opportunities.

 

Please note that there are indeed limits on the number of items allowed to be added at the afore-mentioned two timings. If excessive claims are added, such as exceeding an extent acceptable to the examiner (e.g., dozens of claims), the examiner may require the applicant to pay an excess claim fee in view of the corresponding precedents.

 

If the applicant wants to add quite a few claims while intending to avoid paying an excess claim fee, as an option, the applicant may consider preferentially adding independent claims upon entering the Chinese national phase or in the period for making voluntary amendments, and adding dependent claims in the OA period, because adding a proper number of dependent claims in the OA period will not greatly increase the work of the examiner and is thus more acceptable to the examiner.

 

However, if a dependent claim is of great importance to the applicant, it will be more prudent to submit the amendments involving the dependent claim before the time limit for making voluntary amendments. The amendments involving dependent claims could be declined by the examiner under the Guidelines for Patent Examination. In such a case, in order to protect the technical solution of a dependent claim, the applicant will have to file a divisional application.

 

2. Foreign Patent Applications Entering China via the Paris Convention

 

According to China’s practice of patent examination, the excess claim fee for an application entering China under the Paris Convention is determined based on the number of claims upon filing. The excess claim fee will be charged in a case where there are more than 10 claims.

 

For a patent application entering China under the Paris Convention, the same strategy may be adopted as a PCT application does in the drafting stage and the stage of entering the Chinese national phase in order to avoid or reduce the excess claim fee. That is, the number of claims should be restrained, for example, within 10 items, at the stage of drafting and filing. A suitable number of claims, in particular independent claims, may be added by voluntary amendments. A limited number of dependent claims may be added, if necessary, in the OA period.

 

I hope this information would be helpful, and thank you so much for your interest and attention. If you have any questions, please feel free to contact me. See you next time.