Newsletter
2024 Update of PTA Patent Practice
2024 Update of PTA Patent Practice
C. V. Chen/Daisy Wang
I. Introduction of the Patent Term Adjustment Practice PATENT LAW
The 4th amendment to China’s Patent Law was passed on October 17, 2020, and the amended Patent Law came into effect on June 1, 2021 ("2021 Patent Law"). According to Paragraph 2 of Article 42 of the 2021 Patent Law, "If an invention patent is granted after four years from the patent filing date and three years from the date of filing a request for substantive examination, the patent administration department under the State Council shall, upon a request by the patentee, grant patent term adjustment (“PTA”) to compensate the unreasonable delay in the patent grant process of the invention patent, except for delay(s) caused by the patent applicant." It is noteworthy that the 2021 Patent Law only specifies the threshold for requesting PTA (four years from the patent filing date and three years from the date of filing a request for substantive examination), but the 2021 Patent Law does not stipulate the calculation method for PTA or the amount of the PTA official fee.
Following the enactment of the 2021 Patent Law, the China National Intellectual Property Administration (“CNIPA”) issued Announcement No. 423 on May 25, 2021, titled "Interim Measures for the Handling of Examination Business Related to the 2021 Patent Law" ("Interim Measures"). Regarding the PTA practice, Article 5 of the aforementioned Interim Measures stipulates: "For an invention patent of which the patent grant is published as of June 1, 2021, the patentee may, in accordance with Paragraph 42 of Article 42 of the 2021 Patent Law, submit a request for PTA in paper form within three months from the date of the patent grant publication, and subsequently pay the relevant fees according to the payment notice issued by the CNIPA. The CNIPA will review the aforementioned PTA request after the Implementing Regulations of the 2021 Patent Law takes effect." According to the provisions of the aforementioned Interim Measures, from June 1, 2021, for cases that meet the PTA request threshold specified in the 2021 Patent Law (four years from the patent filing date and three years from the date of filing a request for substantive examination), some patentees have already submitted PTA requests but have not yet paid the official request fees.
After the 2021 Patent Law had been in effect for two and half years, the CNIPA announced the amendment to the Implementing Regulations of the 2021 Patent Law (“Implementing Regulations”) and the amendment of the Patent Examination Guidelines on December 21, 2023. The aforementioned amendments to the Implementing Regulations and Patent Examination Guidelines came into effect on January 20, 2024. The amended Implementing Regulations of the Patent Law and the amended Patent Examination Guidelines provide specific regulations on the examination practice and the standard for handling PTA request cases, particularly regarding the calculation of PTA compensation period involving reasonable delays, unreasonable delays, and the specific calculation methods involved. For details on the aforementioned amendments to the Patent Law, Implementing Regulations and the Patent Examination Guidelines, please refer to the newsletters published by Lee and Li, Attorneys-at-Law as well as Lee and Li - Leaven Intellectual Property Agency Ltd. in November 2023 and January 2024, respectively (https://www.leeandli.com/EN/NewslettersDetail/7154.htm and https://www.leeandli.com/EN/NewslettersDetail/7204.htm)
II. Announcement on “Adjusting Patent Fee Standards and Fee Reduction Policies (No. 594)” and Further Announcement of “Notice on Payment for Patent Term Adjustment Fees and Related Matters” by the CNIPA
On August 6, 2024, the CNIPA issued the "Announcement on Adjusting Patent Fee Standards and Fee Reduction Policies" (No. 594), which further clarified the official fee standards for PTA requests and the annuity payment standards for the patent term extended under PTA grant. Details as to the above-mentioned announcements are as follows:
"When a patentee submits a request for PTA, an official fee of RMB200 per case must be paid. If the request for PTA is reviewed and considered as having met the PTA compensation conditions, the annuity fee for the compensated PTA period must be paid in the amount of RMB8,000 per case per year. The above-mentioned annuity fee will not be needed for a PTA grant with a compensated period less than one year."
Following the issuance of Announcement No. 594, the CNIPA further announced the “Notice on Payment for Patent Term Adjustment Fees and Related Matters” on August 7, 2024, with the following provisions:
"A patentee who submits a request for PTA before July 26, 2024, must pay the PTA request fee by October 26, 2024. Failure to pay or fully pay the PTA request fee by the stated deadline will result in no grant of PTA. If the CNIPA issues a PTA grant decision, the patentee must pay the annuity for the PTA compensation period in full and in a lump sum before the expiration of the 20-year patent term, as required by the PTA grant decision. The late fee payment practice, the annuity payment reinstatement procedure and the payment reduction stipulated in the patent fee reduction regulations shall not apply to annuity payment needed for the PTA compensation period. Failure to pay or fully pay the required annuity for the PTA compensation period by the deadline will result in no PTA grant."
Based on our phone inquiry with a senior examiner from the PTA review team at the CNIPA, we were verbally advised the following information in addition to the aforementioned announcements:
1. For a PTA request submitted by a patentee on or before July 26, 2024, the CNIPA will successively issue a "Payment Notice" specifying that the deadline for paying the official PTA request fee is October 26, 2024. Failure to pay or fully pay the required official PTA request fee by the deadline will result in the rejection of the PTA request. This payment deadline cannot be extended and is not subject to reinstatement procedure.
2. For a PTA request submitted by a patentee after July 26, 2024, the patentee must complete the payment of the official PTA request fees within three months from the publication date of the patent grant. Failure to pay or fully pay the required PTA request fee by the deadline will result in the rejection of the PTA request. This payment deadline cannot be extended and is not subject to reinstatement procedure.
3. The annuity for the PTA compensated period must be paid in full and in a lump sum before the expiration of the 20-year patent term. Failure to pay the required annuity by the patent term expiration date will result in the patentee being unable to receive the concerned PTA grant, even if the said PTA grant was previously decided.
4. The CNIPA will commence the PTA-related review only after receiving the PTA request fee timely paid by the patentee.
5. Starting from August 6, 2024 (the publication date of Announcement No. 594 “Adjusting Patent Fee Standards and Fee Reduction Policies"), a patentee may voluntarily pay the PTA request fee without waiting for the CNIPA's notification regarding the official PTA request fee payment. Such early payment of the official PTA request fee can expedite the initiation of the PTA request review.
III. Further Information on "Reasonable Delay" and "Unreasonable Delay" Involved in PTA Examination Practice
As earlier mentioned, the "Implementing Regulations of the Patent Law " and the "Patent Examination Guidelines" which were amended on December 21, 2023 and came into effect on January 20, 2024, provide the standards for determining reasonable delays and unreasonable delays involved in PTA examination practice, as well as the specific calculation methods. Since the relevant provisions in the aforementioned Implementing Regulations and the Patent Examination Guidelines are mostly principle-based, we have conducted a number of telephone discussions with senior examiners from the PTA examination department at the CNIPA to better understand the precise examination standards. This Item (Item III) covers the oral opinions we obtained from the CNIPA examiners thus far for readers' reference. Please note that these oral opinions from CNIPA examiners are not official opinions shown in any written document issued by the CNIPA and should only be considered for general reference in nature.
A. Reasonable Delays in the Patent Grant Process
According to Paragraph 3, Rule 78 of the Implementing Regulations of the 2021 Patent Law, any of the following circumstances shall constitute reasonable delay in the PTA examination process and thus is deemed as the "period to be deducted" in the PTA calculation:
1. "Reexamination Procedure Involving Amendments to Patent Application Documents" as Stipulated in Rule 66 of the Implementing Regulations of the Patent Law.
Regarding this reasonable delay matter, the Patent Examination Guidelines do not specify the start and end dates for calculating the "reasonable delay period."
We obtained the following verbal opinion through our telephone discussion with the CNIPA examiners:
(1) The start and end dates for calculating this reasonable delay period are
as follows:
Start date: The date of issuing the "rejection decision"
End date: The date of issuing the "reexamination decision"
(2) If a patent case involves more than one reexamination procedure, the "period to be deducted in the PTA calculation" should be determined and calculated separately based on the amendment(s) involved in each reexamination procedure. For example, if a patent case involves two reexamination procedures and each reexamination procedure involves amendment application(s), the period to be deducted for each amendment should be calculated separately, with the start and end points being the "date of issuing the rejection decision" and the "date of issuing the reexamination decision" for each reexamination procedure. If a patent case involves more than one reexamination procedure but only one of the reexamination procedures involves an amendment application, the period to be deducted in the PTA calculation should be the number of days between the "date of issuing the rejection decision" and the "date of issuing the reexamination decision" for that particular reexamination procedure. Other reexamination procedures that do not involve amendment application do not fall under the "period to be deducted in the PTA calculation."
2. “Suspension of Proceedings” Due to Disputes over Patent Ownership as Stipulated in Rule 103 of the Implementing Regulations of the Patent Law
Rule 103 of the Implementing Regulations of the Patent Law stipulates: When a dispute arises between or among parties regarding the right to apply for patent or the right to own a patent, and the parties in dispute have requested mediation from the patent administration department or have filed a lawsuit with the People's Court, the concerned party (parties) may submit a request to the CNIPA for suspending the relevant proceedings of the patent case(s) involved. To request the suspension of the relevant proceedings, a request must be submitted to the CNIPA, explaining the reasons and attaching copies of the relevant acceptance documents issued by the patent administration department or the People's Court, with the patent application number or patent number of the concerned patent case clearly stated therein. If the CNIPA deems that the reason(s) for requesting suspension as provided by the petitioning party (parties) is (are) obviously with no ground, it may decide not to suspend the relevant proceedings.
After a mediation statement issued by the department managing patent affairs or a judgment rendered by the People's Court for the patent ownership dispute comes into effect, the parties involved shall proceed with the formalities for resuming the suspended procedures with the CNIPA. If the dispute over the ownership of the patent application right or the patent right ownership has not been resolved within one year from the date of requesting for suspension, and it is necessary to continue the suspension of the relevant procedures, the requester shall apply for an extension of the suspension within the originally suspended period. If no extension is requested upon the expiration of the suspension period, the CNIPA shall automatically resume the relevant procedures.
Regarding this reasonable delay matter, the Patent Examination Guidelines do not specify the start and end dates for calculating the "reasonable delay period." However, Section 7, Chapter 7, Part V of the Patent Examination Guidelines on "Suspension of Procedures" reveals the following:
"If the conditions for suspension of procedures are met or are met after correction, a request for suspension of procedures shall be submitted to the CNIPA. The examiner will issue a notice of approval for the suspension request to both parties involved in the patent ownership dispute and inform them of the start and end dates of the suspension period (starting from the date of the request for suspension of procedures)."
Through our discussion with the CNIPA examiners via telephone, we obtained the following oral information:
(1) The start and end dates of this reasonable delay period are as follows:
Start Date: The start date of the suspension procedure as stated in the notice of approval for the suspension procedure request issued by the CNIPA.
End Date: The end date of the suspension procedure as stated in the notice of approval for the suspension procedure request issued by the CNIPA.
(2) If the patent involved in the PTA request pertains to the "suspension procedure" stipulated in Rule 103 of the Implementing Regulations of the Patent Law, the PTA examination will refer to the relevant provisions of Sections 7.3.1 and 7.4.1, Chapter 7, Part V of the Patent Examination Guidelines. In other words, the start and end dates of the suspension procedure to be deducted in the PTA calculation period shall be based on the start and end dates of the suspension period mentioned in the notice of approval for the suspension procedure request issued by the CNIPA.
(3) According to the "suspension procedure" provisions in the Patent Examination Guidelines (Part V, Chapter 7, Sections 7.2), the scope of the suspension procedure includes: (1) suspension of the preliminary examination, substantive examination, reexamination, grant of patent and patent invalidation procedures; (2) suspension of procedures related to procedures through which a patent application is considered having been withdrawn, a grant patent is considered as having been abandonment, and a patent is considered as having become extinguished due to non-payment of annuity fee; (3) suspension of procedures for withdrawing a patent application, abandoning grant patent right, changing the name of the patent applicant (or a patentee), assignment of patent application (or a patent), and recordation of pledge creation over a patent. Procedures that have already been started for laying-open publication preparation or for patent grant publication preparation before the approval of the suspension request shall not be affected by the suspension.
3. Suspension Procedures Due to Property Preservation Provisional Measures as Stipulated in Rule 104 of the Implementing Regulations of the Patent Law.
Rule 104 of the Implementing Regulations of the Patent Law stipulates: When a people's court, during the trial of a civil case, decides to take property preservation measures on a patent application or a grant patent, the CNIPA shall suspend the relevant procedures of the preserved patent application or preserved patent on the day when it receives the property preservation ruling issued by the court and the court’s notice of assistance in enforcing the property preservation ruling. If the property preservation period expires and if the court does not decide to continue the preservation measures, the CNIPA shall automatically resume the suspended procedures.
Regarding this reasonable delay matter, the Patent Examination Guidelines do not specify the start and end dates for calculating the "reasonable delay period." However, the "preservation measures" section (Section 7, Chapter 7, Part V) of the Patent Examination Guidelines states as follows:
"Upon receiving the ruling on property preservation measures made by the people's court, the CNIPA shall review and made a decision as to suspension of the relevant procedures of the concerned patent application or granted patent under property preservation riling in accordance with the relevant laws and regulations. For a ruling that comply with laws and regulations, the CNIPA shall issue a notice to the people's court and the applicant or patentee as to the commencement of the property preservation measures, specifying the start and end dates of the property preservation period (starting from the date of receipt of the court ruling), and the CNIPA shall further announce the patent-related property preservation measure."
Through our telephone discussion with examiners at the CNIPA, we received the following verbal information:
(1) The start and end dates of this reasonable delay period are as follows:
Start Date: The start date of the property preservation period as stated in the notice of commencement of property preservation measures issued by the CNIPA.
End Date: The end date of the property preservation period as stated in the notice of commencement of property preservation measures issued by the CNIPA.
(2) If the patent involved in a PTA request pertains to the "suspension of procedures" as stipulated in Rule 104 of the Implementing Regulations of the Patent Law, the examination handling the PTA request shall refer to the relevant provisions in Sections 7.3.2 and 7.4.2, Chapter 7, Part V of the Patent Examination Guidelines on "suspension of procedures." In other words, the start and end dates of the suspended procedures to be deducted in the calculation of the PTA period shall be based on the start and end dates of the property preservation period as stated in the notice of commencement of property preservation measures issued by the CNIPA.
4. Other Reasonable Delays
According to Item 3, Paragraph 3 of Rule 78 of the Implementing Regulations of the Patent Law, "delay caused by other reasonable reasons" is also listed as one of the reasonable delay scenarios and should be deducted in the calculation of the PTA period.
Section 2.2.1, Chapter 9, Part V of the Patent Examination Guidelines stipulates: "Other delays caused by reasonable reasons such as administrative suit litigations" also constitute reasonable delays. Based on our telephone discussion with CNIPA examiners, this provision is of a catch-all nature rather than an exhaustive enumeration. Besides the "administrative litigation" mentioned in the Patent Examination Guidelines, what other circumstances would be considered as reasonable delays and need to be deducted in the PTA calculation will be determined by the CNIPA based on the specific circumstances on a case-by-case basis.
B. Unreasonable Delays Caused by Patent Applicants
According to Rule 79 of the Implementing Regulations of the Patent Law and Section 2.2.2, Chapter 9, Part V of the Patent Examination Guidelines, the following circumstances shall be considered unreasonable delays caused by an applicant during the patent grant process and are therefore considered as "periods to be deducted" in the calculation of PTA:
1. Delay Caused by Failing to Respond to a Notification Issued by the CNIPA within the Specified Response Time Limit
Regarding this unreasonable delay matter, the Patent Examination Guidelines do not clearly specify the start and end dates for calculating the "period of unreasonable delay." However, Section 2.2.2, Chapter 9, Part V of the Patent Examination Guidelines stipulates the following:
"Delay caused by failing to respond to a notification issued by the CNIPA within the specified response time limit shall be calculated from the day following the expiration of the response time limit to the actual date of submitting the response."
According to our telephone discussion with the CNIPA examiners, we obtained the following verbal information:
“The start and end dates of this unreasonable delay period are as follows:
Start date: the original response deadline
End date: the actual date of submitting the response”
2. Delays Resulting from Request for Deferred Examination:
According to Paragraph 2, Rule 56 of the Implementing Regulations of the Patent Law, a request for deferred examination of an invention patent should be submitted by the applicant at the same time when filing a request for substantive examination. However, the said request for deferred examination of an invention patent application shall become effective from the date on which the request for substantive examination takes effect. The deferral examination period can be 1 year, 2 years, or 3 years from the effective date of the request for deferred examination.
Regarding this unreasonable delay matter, the Patent Examination Guidelines do not specify the start and end dates for calculating this "unreasonable delay period." It is only stipulated in Section 2.2.2, Chapter 9, Part V of the Patent Examination Guidelines as follows:
"If a request for deferred examination is made, the number of days of delay is the actual number of days the examination is deferred."
We obtained the following verbal information via the telephone discussion with the CNIPA examiners:
“The start and end dates for calculating this period of unreasonable delay period are as follows:
Start Date: the date on which the request for substantive examination takes effect
End Date: the expiration date of the requested deferred examination period”
3. Delays Caused by Incorporation by Reference
According to Rule 45 of the Implementing Regulations of the Patent Law, if the specification or claims are not completely filed or are erroneously filed for an invention patent application or a utility model patent application, but the applicant has claimed priority on the filing date, the applicant may supplement the missing documents by incorporating the prior application document(s) (“incorporation by reference) within two months from the filing date or within the time period designated by the CNIPA. If the late-submitted documents comply with the relevant regulations, the filing date of the initially submission shall be deemed as the patent filing date.
Regarding this unreasonable delay matter, the Patent Examination Guidelines do not specify the start and end dates for calculating the "unreasonable delay period." It is only stipulated in Section 2.2.2, Chapter 9, Part V of the Patent Examination Guidelines as follows:
"The delay caused by incorporation by reference shall be the number of days of delay caused by Rule 45 of the Implementing Regulations of the Patent Law."
We received the following verbal information via our telephone discussion with the CNIPA examiners:
“The start and end dates for calculating this unreasonable delay period are as follows:
Start Date: the patent filing date
End Date: the date on which the applicant completes the missing document submission through the incorporation by reference procedure”
4. Delays Caused by Request for Reinstatement of Rights
Regarding this unreasonable delay matter, Section 2.2.2, Chapter 9, Part V of the Patent Examination Guidelines stipulates the following:
"The delay caused by a request for reinstatement of rights shall be calculated from the day on which the original deadline expires to the date of issuing a notice approving the request for reinstatement of rights, unless it can be proven that the delay was caused by the CNIPA."
We discussed with CNIPA examiners via telephone and received the following verbal information:
“The calculation of the start and end dates for this unreasonable delay period is as follows:
Start Date: the date on which the original deadline expires
End Date:the date of issuing a notice approving the request for reinstatement of rights”
5. Delays caused by an Applicant not Requesting Expedited Processing When Entering a PCT international application into National Phase in China within the 30-months Entry Deadline
Regarding this unreasonable delay matter, Section 2.2.2, Chapter 9, Part V of the Patent Examination Guidelines stipulates as follows:
"For a national phase entry application filed in China based on a PCT international application within the 30-month entry deadline, the delay caused by the applicant not requesting expedited processing shall be calculated from the date of entry into national phase in China to the date on which the 30-months entry deadline from the filing date expires."
We received the following verbal information from the CNIPA examiners via our telephone discussion:
“The calculation of the start and end dates for this unreasonable delay period is as follows:
Start date: The date of entry into national phase in China
End date: The expiration date of the 30-month entry period from the priority date (in case of a single priority claim made for the PCT/CN case), the earliest priority date (in case of multiple priority claims made for the PCT/CN case) or the filing date of the PCT international patent application (in case of no priority claim made for the PCT/CN case)."
The CNIPA is expected to begin examining PTA request cases soon. We will continue to monitor the relevant examination practice and the examination standards and we will certainly share all the important examination practice updates with our clients and readers of our newsletters in a timely manner.